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
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 Jan. 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 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.
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.
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.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kuboki et al. (US Patent Application 2021/0261736 A1, published 26 Aug. 2021, priority 12 Sep. 2018, hereinafter Kuboki) in view of Zhang et al. (“Synthesis and characterization of a novel cycloaliphatic epoxy resin starting from dicyclopentadiene,” Euro.Poly.J., Vol. 43, pp. 2149-2154, published 2007, hereinafter Zhang).
Regarding claims 1-6 and 9-10, Kuboki teaches a maleimide resin in which the maleimide content is 90 mass% or less (Abstract). Kuboki teaches his maleimide has the structure shown below, in which the central arylene group has a meta orientation and 1<n<5 (paragraphs 0019-0020 and chemical structure (2), reproduced below). Kuboki teaches his resin comprises a modified polyphenylene ether resin (paragraph 0150 and Table 4, Example 15), which the specification of the current invention discloses as having methacrylate terminal ends (paragraph 0155 of the specification of the current invention). Kuboki teaches the inclusion of a peroxide (paragraph 0153 and Tables 3 and 4). Kuboki teaches his composition includes a curing agent (paragraphs 0027-0028), and Kuboki teaches his composition includes polybutadiene as an additive (paragraph 0098). In Example 15, Kuboki teaches a resin formulation with 57 mass% (40/(40+30)) maleimide compound to the amount of both the maleimide and phenylene ether compounds (Table 4, Example 15). Kuboki teaches inclusion of a filler, such as silica, in his resin (paragraph 0098). Kuboki teaches his composition is used in a wiring board (paragraph 0102).
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Note: Kuboki’s text recites that the amount of bismaleimide content is “90 area% or less” throughout this patent document. Examiner also found the usage of this same “area” terminology in the Taiwanese and WO patent family documents. Examiner is interpreting this limitation as “mass%”.
Kuboki teaches that an epoxy resin can be incorporated into his curable resin composition (paragraph 0085).
Kuboki does not disclose inclusion of a dicyclopentadiene type epoxy.
Zhang teaches the use of a cycloaliphatic epoxy resin starting from dicyclopentadiene for use in printed circuit boards (Abstract and page 2149, 1st column, 1st paragraph).
Given that Kuboki and Zhang are drawn to thermosetting compositions for circuit boards, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a cycloaliphatic epoxy resin based on dicyclopentadiene as taught by Zhang as the epoxy resin in the resin formulation taught by Kuboki. Since Kuboki and Zhang are both drawn to thermosetting compositions for circuit boards, one of ordinary skill in the art would have a reasonable expectation of success in incorporating a cycloaliphatic epoxy resin based on dicyclopentadiene as taught by Zhang as the epoxy resin in the resin formulation taught by Kuboki. Further, Zhang teaches that his cured epoxy resin had excellent thermal stability and considerably low thermal expansion coefficient (page 2153, 2nd column, Conclusions section, 1st paragraph).
It is the examiner’s position that the multiple epoxide groups on the epoxy resin taught by Zhang would initiate curing; therefore, the epoxy resin taught by Zhang is a curing agent.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kuboki et al. (US Patent Application 2021/0261736 A1, published 26 Aug. 2021, priority 12 Sep. 2018, hereinafter Kuboki) in view of Zhang et al. (“Synthesis and characterization of a novel cycloaliphatic epoxy resin starting from dicyclopentadiene,” Euro.Poly.J., Vol. 43, pp. 2149-2154, published 2007, hereinafter Zhang) and further in view of Kasahara et al. (WO 2020/095422 A1, published 14 May 2020, hereinafter Kasahara).
Regarding claim 8, Kuboki in view of Zhang teaches the elements of claim 1.
Kuboki in view of Zhang does not disclose the inclusion of a thermoplastic styrenic polymer.
Kasahara teaches a resin composition comprising a polyphenylene ether derivative, a maleimide compound, a styrene-based thermoplastic elastomer (thermoplastic styrenic polymer), and silica (Abstract and paragraphs 0067-0068 and 0077).
Given that Kuboki and Kasahara are drawn to resins comprising a maleimide compound, polyphenylene ether, and silica, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a styrene-based thermoplastic elastomer (thermoplastic styrenic polymer) as taught by Kasahara into the resin formulation taught by Kuboki in view of Zhang. Since Kuboki and Kasahara are both drawn to resins comprising a maleimide compound, polyphenylene ether, and silica, one of ordinary skill in the art would have a reasonable expectation of success in incorporating a styrene-based thermoplastic elastomer (thermoplastic styrenic polymer) as taught by Kasahara into the resin taught by Kuboki in view of Zhang. Further, Kasahara teaches by incorporating a styrene-based thermoplastic elastomer into his polyphenylene ether-maleimide resin composition, the dielectric properties in the high frequency band of 10 GHz or more, formability, adhesion to conductors, solder heat resistance, glass transition temperature, thermal expansion coefficient, and flame retardancy tend to be improved and well-balanced (paragraph 0068).
Response to Arguments
Applicant's arguments filed 27 Jan. 2026 have been fully considered. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claim 1.
Applicant argues that Kuboki fails to teach the curing agent in the amended claim 1.
However, as presented above, Kuboki teaches the use of an epoxy in his composition, and Zhang teaches the use of a dicyclopentadiene-based epoxy in compositions for electronic circuits.
Applicant argues that applicant’s data shows unexpected results over the prior art.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the data utilizes ranges of relative amounts of specific manifestations of the claimed components in the compositions, whereas claim 1 has no limitations for the relative amounts of broadly defined components in the claimed composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ren et al. (“Synthesis and characterization of a novel epoxy resin containing naphthyl/dicyclopentadiene moieties and its cured polymer,“ Polymer, Vol. 47, pp 8309-8316, published 2006, hereinafter Ren) teaches the use of an epoxy resin containing naphthyl/dicyclopentadiene moieties that show great improvement in heat-resistant properties. Lin et al. (“Using Dicyclopentadiene-Derived Polyarylates as Epoxy Curing Agents To Achieve High Tg and Low Dielectric Epoxy Thermosets,” ACS Omega, Vol. 3, pp. 4295-4305, published 2018, hereinafter Lin) teaches the use of dicyclopentadiene-derived polyarylates as epoxy curing agents. Kawahara et al. (WO 2019/189466 A1, published 03 Oct. 2019, hereinafter Kawahara) teaches a resin material containing N-alkyl bismaleimide compounds that result in improved properties.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M-F 8:00 am to 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at telephone number 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787