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 .
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.
Claims 1, 3, 7, 9, 10, 11 are rejected 35 U.S.C. 103 as being unpatentable over Daito (JP2012131947, herein Daito, a machine translation is being used for citation purpose), in the view of Aya (US20180327593, herein Aya).
Regarding Claims 1, 3, 7, Daito teaches solvent-free resin composition, wherein, the organic solvents and the like contained in the liquid resin composition are substantially dried and removed [0056], indicates solvent-free, which lies in the claimed solvent range less than 5%, which comprises:
the average particle size of the inorganic filler is defined as D50 [0015], boron nitride (b2), average particle size 0.1 to 10 μm [0018], reads on the second filler, in the range of 15 to 75 wt % [0017]; alumina, average particle size 1 to 10 μm [0019], reads on the first filler and overlaps the claimed size range, the total amount of alumina and (b2) boron nitride is preferably 20 to 80% by weight based on the solid content of the entire epoxy resin composition [0021], therefore, the alumina range is 5% to 75%, overlap the claimed ranges, when first filler concentration is 5%, it can lead to the first filler (B) to second filler (C) weight ratio to 5/15=0.33 to 5/75=0.07 and the sum of first filler (B) to second filler (C) range more than 20 to 80% overlap the claimed ranges.
At the time of filing or before the effective filing date of the claimed invention, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the average particle size of the inorganic filler is defined as D50 [0015], boron nitride (b2), average particle size 0.1 to 10 μm [0018], reads on the second filler, in the range of 15 to 75 wt % [0017]; alumina, average particle size 1 to 10 μm [0019], reads on the first filler and overlaps the claimed size range, the total amount of alumina and (b2) boron nitride is preferably 20 to 80% by weight based on the solid content of the entire epoxy resin composition [0021], and optimize the ranges and apply the born nitride and alumina with the specific sizes and ranges into the resin compound formation. Doing so would further lead to the desired property of boron nitride with an average particle size of 0.1 to 10 μm can lead to dispersibility and impregnation [0018], and alumina with an average particle size of 1 to 10 μm can lead to dispersibility, impregnation, and heat dissipation [0019] as taught by Daito.
Daito teaches resin (C) styrene-butadiene copolymers [0036], but does not explicitly teach the maleic acid-modified liquid hydrocarbon resin and the range. However, Aya teaches modified polybutadiene (B), Ricon 184MA6 [0062], matches the “184MA6” which is a maleic acid-modified liquid hydrocarbon resin; as well as maleic acid-modified alkadiene-based polymer, and maleic acid-modified liquid polybutadiene. [Instant application-spec. 0070], in the range of “1 to 50% by mass” [0024] overlaps the
Daito and Aya are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of inorganic filler- polybutadiene copolymer- polyimide based resin composition for printed circuit board manufacturing toward the hole filling/sealing application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the teachings of Aya and provide wherein said the modified polybutadiene (B), Ricon 184MA6 [0062], in the range of “1 to 50% by mass” [0024], and apply into the composition formation. Doing so would minimize the resin separation and the gloss unevenness. [0063], as taught by Aya.
In the case where the claimed ranges "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). See MPEP § 2144.05.
Regarding Claim 10, Daito teaches “colorants” [0037].
Regarding Claim 11, Daito teaches the cured product of resin composition for printed wiring boards [0094], with the insulation between through holes in the printed wiring board was excellent [0093], collectively read on and capable for the specified application.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [See MPEP 2144.07]
Claims 8, 9 are rejected 35 U.S.C. 103 as being unpatentable over Daito (JP2012131947, herein Daito, a machine translation is being used for citation purpose), and Aya (US20180327593, herein Aya) as applied in claim 1 above, and in the further view of Zhong (US20070241303, herein Zhong).
Regarding Claim 8, Daito and Aya collectively teach the resin composition as set forth in claim 1 above. Daito is silent on crosslinking agent and initiator, however, Zhong teaches “triallylisocyanurate (TAIC)” [0130] matches the claimed crosslinking agent; benzoyl peroxide [0039] matches the claimed initiator. Daito and Zhong are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the inorganic filler, polyimide, styrene copolymer-based resin composition for circuit board application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teachings of Zhong and provide wherein said the “triallylisocyanurate (TAIC)” [0130]; benzoyl peroxide [0039], and apply into the composition formation. Doing so would lead to the product development via “gel material may be formed through transition metal catalyzed crosslinking reaction between a vinyl-functionalized organosiloxanes and a crosslinking agent” [0083]; and curing of the matrix material typically occurs at a temperature in a range between about 20° C. and about 250° C [0040], this process suitability is owing to the selections of initiator and crosslinking agent, as taught by Zhong.
Claim 12 is rejected 35 U.S.C. 103 as being unpatentable over Daito (JP2012131947, herein Daito, a machine translation is being used for citation purpose), and Aya (US20180327593, herein Aya) as applied in claim 1 above, and in the further view of Koes (US20200270413, herein Koes).
Regarding Claim 12, Daito and Aya collectively teach the resin composition as set forth in claim 1 above. Daito teaches inorganic filler [0015], but is silent on wherein the first filler (B) has a D90 particle size of 1 μm to 9 μm, and the second filler (C) has a D90 particle size of 10 μm to 30 μm. However, Koes teaches fused silica can have a D90 particle size of 1 to 20 micrometers [0031] overlaps the range of the second filler (C); the composite can comprise a ceramic filler other than the hydrophobized fused silica; The ceramic filler can have a D90 particle size of 0.1 to 10 micrometers [0036] overlaps the range of the first filler (B). Daito and Koes are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of inorganic filler- polybutadiene copolymer-based resin composition for printed circuit board manufacturing. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the teachings of Koes and provide wherein said the fused silica can have a D90 particle size of 1 to 20 micrometers [0031]; the composite can comprise a ceramic filler other than the hydrophobized fused silica; The ceramic filler can have a D90 particle size of 0.1 to 10 micrometers [0036] and apply into the composition formation. Doing so would lead to the desired properties from hydrophobized fused silica is capable of curtailing moisture absorption (imparting hydrophobicity) to the resultant composite thereby maintaining a low dissipation loss (Df) of less than or equal to 0.005 at 10 GHz when exposed to 50% relative ambient humidity. It was also discovered that the incorporation of an additional ceramic filler is capable of curtailing prepreg resin runback (cascading) during b-staging and that a fine particle size ceramic filler is capable of influencing the lateral resin shear viscosity during lamination and inhibiting resin-filler separation [0016] as taught by Koes.
In the case where the claimed ranges "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). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 4/15/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Daito (JP2012131947, herein Daito, a machine translation is being used for citation purpose), and Aya (US20180327593, herein Aya).
In this case, Daito and Aya collectively teach all of the claimed ingredients, in the claimed amounts of the composition as set forth above in the new rejection. The applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above.
In response to the “unexpected results”, which also within the declaration under 37 CFR 1.132 filed 4/15/2026, are further not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness.
When Examples 1-8 and Comp. Examp. 1-9 are considered as a whole, they establish results associated with narrow ranges, with respect to the claimed ranges provided for comparison.
Claims 1 and 7 are open to the broad selection of first and second fillers and the ranges. However, the Examples 1-5, 8 and Comp. Examp. 1-9, and Example 9 from the declaration under 37 CFR 1.132 filed 4/15/2026 only include SiO2 based filler systems. Therefore, these examples employ a limited range of first/second filler selection only from SiO2 that are not reasonably commensurate with the breadth of the claimed reinforcing filler, and cannot be relied upon to establish non-obviousness.
Furthermore, the Examples 1-5, 7 and Comp. Examp. 1, 5, 7, 9 only include single concentration combination, namely first filler 60 pbw; second filler 120 pbw. Therefore, these examples employ a limited range of first/second filler ratio that are not reasonably commensurate with the breadth of the claimed reinforcing filler, and cannot be relied upon to establish non-obviousness. Additionally, the Comp. Examp. 3, 6 only include second filler without first filler; Comp. Examp. 4, 8 only include first filler without second filler; Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In response to the “Both Daito and Aya relate to dielectric materials for use as dielectric layers in printed circuit boards and not analogous art”, the argument is not persuasive.
In this case, first, the instant claim(s) is directed to solvent-free resin composition, which collectively taught by Daito and Aya as set forth in the rejection above. The instant claim(s) is not directed to via-filling material for use in printed circuit boards as applicant pointed out. Furthermore, Daito teaches the cured product of resin composition for printed wiring boards [0094], with the insulation between through holes in the printed wiring board was excellent [0093], collectively read on and capable for the specified application, further meet the present invention also provides a printed circuit board filled with the resin composition [Instant App. US20240084063; 0002].
Therefore, the via-filling materials for use in printed circuit board as applicant pointed out, is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [See MPEP 2144.07].
Second, the instant application discloses “solvent-free” means that, based on the total weight of the resin composition, the amount of the solvent is less than 5 wt %, particularly less than 3 wt %, and more particularly less than 1 wt %. [Instant App. US20240084063; 0028], which does not exclude the solvent from the resin composition, therefore, the teaching of Daito solvent-free resin composition, wherein, the organic solvents and the like contained in the liquid resin composition are substantially dried and removed [0056], and organic solvent preferably 6% by mass or less [0087] as taught by Aya, both can meet the instant application. Therefore, neither Daito nor Aya teaches away the instant application.
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 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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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