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
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 Hayashi et al. (WO 2019/240217 A1, published 19 Dec. 2019, hereinafter Hayashi).
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, and the filler and all other additives are present in his composition in the amount of 700 parts or less to 100 parts of the curable resin composition (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 his curable resin composition further includes a curing agent (paragraph 0028).
Kuboki does not disclose inclusion an N-alkylbismaleimide compound as a curing agent.
Hayashi teaches a curable resin layer in a laminate for a multilayer printed circuit board in which this layer includes epoxy, polyphenylene ether resin, an inorganic filler, and a curing agent (Abstract, claim 6, and paragraphs 0019 and 0158). Hayashi teaches the curing agent is N-alkylbismaleimide (paragraphs 0108 and 0127), and the amount of the curing agent is 0.5 to 15 wt.% based on the solid content of his insulating resin layer (paragraph 0131).
Although the basis for the amount of the curing agent in Hayashi (all solid content) and the basis for the present claims (total mass of polyphenylene ether and maleimide compound) are different, given the amount of filler taught by Kuboki and the amount of curing agent taught by Hayashi, it is the examiner’s position that there is significant overlap in the amount of curing agent taught by Hayashi and the amount claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of curing agent from the overlapping portion of the range taught by Hayashi because overlapping ranges have been held to be prima facie obviousness.
Given that Kuboki and Hayashi 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 N-alkylbismaleimide as a curing agent and in the amount taught by Hayashi as the curing agent in the resin formulation taught by Kuboki. Since Kuboki and Hayashi are both drawn to thermosetting compositions with a curing agent for circuit boards, one of ordinary skill in the art would have a reasonable expectation of success in incorporating an N-alkylbismaleimide as a curing agent and in the amount taught by Hayashi as the curing agent in the resin formulation taught by Kuboki. Further, Hayashi teaches that the maleimide compound lowers the dielectric loss tangent of cured compound and suppresses spontaneous peeling of other films from the cured resin layer during and after curing (paragraph 0110). Additionally, Hayashi teaches if the content of the maleimide compound is above the lower limit and below the upper limit, the thermal dimensional stability of the cured product can be further enhanced (paragraph 0132).
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 Hayashi et al. (WO 2019/240217 A1, published 19 Dec. 2019, hereinafter Hayashi) 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 Hayashi teaches the elements of claim 1.
Kuboki in view of Hayashi 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 Hayashi. 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 Hayashi. 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 04 May 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 inclusion of two different maleimide compounds in his composition.
However, as presented above, Kuboki teaches the inclusion of a maleimide compound with the claimed specific structure and a curing agent, and Hayashi teaches the inclusion of an N-alkylbismaleimide compound as a curing agent, which is different from the maleimide structure taught by Kuboki.
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, other than the amount of curing agent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takeuchi (US Patent Application 2018/0009195 A1, published 11 Jan. 2018) teaches a resin material containing a polymaleimide compound containing two or more maleimide groups bonded to an aliphatic chain as a curing agent (Abstract and paragraph 0064) in the amount 2 to 60 wt.% of the total mass of the resin composition (paragraph 0062).
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 extension fee 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 date of this final action.
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 - 5:00 pm ET. 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, Callie Shosho, can be reached at 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
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