DETAILED ACTION
Applicant’s response of January 2, 2026 has been fully considered. Claim 1 is amended and claims 9-11 are added. Claims 1-11 are pending.
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
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 2019/0359822) in view of Yasumoto et al. (WO 2021/261305). For convenience, the citations for Yasumoto et al. are taken from English language equivalent US 2023/0257581.
Regarding claims 1-3 and 10, Fukuda et al. teaches a composition comprising an epoxy resin, a polyphenylene ether resin, a curing agent, a curing catalyst, and 90 parts by mass of a thermoplastic resin (Table 1, Example 12). The epoxy resin is 1,4-bis{[2-(3,4-epoxycyclohexyl)ethyl]dimethylsilyl}benzene, which contains two epoxy groups per molecule (¶186). The curing catalyst is an imidazole-based curing catalyst (¶200), which is specifically 2-ethyl-4-methylimidazole (see enclosed data sheet for EMI24). This curing catalyst is used in the instant working examples and therefore meets the description of an anionic polymerization initiating catalyst. The thermoplastic resin is maleic anhydride-modified hydrogenated styrene-ethylene-butylene-styrene copolymer, specifically Tuftec M1913 (¶202), which is used in instant working example 5. This composition can be cured by heating (¶180).
Fukuda et al. does not teach that the composition comprises a maleimide compound represented by claimed formula (1) wherein a mass ratio between the styrene-based elastomer and the maleimide compound is 2 to 20. However, Yasumoto et al. teaches a resin composition comprising a maleimide compound, a phosphorus-containing compound, a styrene copolymer, a further resin component that may be an epoxy resin, and a curing catalyst (¶36, 70, 83). The maleimide compound can be
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which corresponds to claimed formula (1) wherein R1 is C36H70, which is a dimer acid skeleton-derived hydrocarbon group. The maleimide compound is present in the composition in from 20 to 50 parts by mass (¶47). Taking the styrene resin of Fukuda et al. to be present in 90 parts by mass, a mass ratio of the styrene resin to the maleimide compound (mass ratio (A)/(B)) is from 1.8 to 4.5 (calculated by Examiner; 90/20=4.5 and 90/50=1.8). Fukuda et al. and Yasumoto et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of compositions of epoxy resin and styrene copolymers used as heat curable films. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 20 to 50 parts by mass of a maleimide compound, as taught by Yasumoto et al., to the composition, as taught by Fukuda et al., and would have been motivated to do so in order to further reduce the warpage of any film/substrate comprising the composition (¶47).
Fukuda et al. teaches that the epoxy resin is present in 10 parts by mass (Table 1, Example 12). The amount of the epoxy resin per 100 parts by mass of a total of amount of the styrene-based resin and the maleimide compound is from 7.14 to 9.1 parts by mass (calculated by Examiner)1. Further, Fukuda et al. teaches that the catalyst is present in 0.1 parts by mass (Table 1, Example 12). The amount of the catalyst per 100 parts by mass of a total of amount of the styrene-based resin and the maleimide compound is from 0.07 to 0.09 parts by mass (calculated by Examiner)2.
Regarding claims 4-8, Fukuda et al. teaches that the epoxy resin composition can be used for semiconductor sealing materials (substrate comprising cured product), sealing materials (encapsulation material), interlayer insulation films, adhesive layers, coverlay films, electromagnetic shielding films, printed circuit board materials, and composite materials (¶181). Fukuda et al. additionally teaches that the composition may be cured by heating, which will produce a cured product (¶180). Therefore, Fukuda et al. teaches an uncured and cured film, an adhesive agent, an encapsulation material, and a substrate comprising the composition of claim 1, either cured or uncured.
Regarding claim 9, Fukuda et al. teaches that the mixing ratio of the epoxy resin to the polyphenylene ether in the present invention is, by mass ratio, for example, preferably 20:1 to 1:50, and more preferably 10:1 to 1:30 (¶154). In Example 12 in Table 1, this ratio is 1:9 (10 parts of epoxy resin to 90 parts of polyphenylene ether resin). Adjusting these amounts to 5 parts by mass of epoxy resin and 95 parts by mass of polyphenylene ether resin would result in a ratio that is 1:19 and well within the most preferred ratio range. Using these values to calculate the amount of the epoxy resin (C) per 100 parts by mass of the total amount of the styrene-based resin and the maleimide compound is from 3.4 to 4.3 parts by mass (calculated by Examiner; [(95+20)/5]=100/x, x = 4.3; [(95+50)/5]=100/x, x = 3.4).
Regarding claim 11, as set forth above, Fukuda et al. teaches amounts and ranges which provide for an amount of the epoxy resin (C) per 100 parts by mass of the total amount of the styrene-based resin and the maleimide compound of from 3.4 to 4.3 parts by mass; and an amount of the catalyst (D) per 100 parts by mass of a total of amount of the styrene-based resin and the maleimide compound is from 0.07 to 0.09 parts by mass.
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive.
Applicant argues that Fukuda et al. and Yasumoto et al. have differing objects and effects from the present invention, that these references even in combination would not have suggested a maleimide resin composition which exhibits no turbidity and separation when in the form of a varnish, and that these references have no common essential ingredients and use ingredients that are not described in the present invention as essential ingredients. These arguments are unpersuasive.
First, there is no requirement that the prior art references must be related to a competition which exhibits no turbidity and separation when in the form of a varnish. The requirement for analogous art is that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as stated in the rejection of record, Fukuda et al. and Yasumoto et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of compositions of epoxy resin and styrene copolymers used as heat curable films. Second, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Finally, applicant’s claim uses open claim language (“comprising”), which means that other un-claimed components may be present within the prior art compositions, and that other un-claimed components may be present within the claimed composition. The fact that Fukuda et al. includes polyphenylene ether resins or that Yasumoto et al. includes phosphorus-containing compounds is not germane to the instant claims as currently written. Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In summary, Fukuda et al. and Yasumoto et al. are analogous art, they do not need to be concerned with the exact same issue or problem as solved by applicant, and they may include other essential ingredients without negating their relevance as prior art. This argument is unpersuasive.
Applicant also argues that the instant invention has achieved unexpected results in the areas of varnish appearance and the handling property of the uncured resin film. To this end, applicant points the Office to the examples and comparative examples in Tables 1-4 of the instant specification. This argument is unpersuasive. In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, the examples presented in the instant specification are not commensurate in scope with the claims. First, each of the components (A) through (D) are very broadly claimed and this breadth is not covered by the components used in the examples. Further, as for the mass ratio of component A to component B, Working Examples 1-4 exemplify a ratio of 2.3 to 19 (this range is relatively commensurate in scope with the claimed range of 2 to 20) and Comparative Examples 4 and 5 have mass ratios of 1.5 and 24, respectively, which lie outside of the claimed range. While the handling property of Comparative Example 4 is considered inferior in comparison the Working Examples, this property for Comparative Example 5 is the same as the Working Examples. Therefore, this property does not give rise to unexpected results over the claimed range. Additionally, applicant points out the heat resistance is inferior for Comparative Example 5, but the heat resistance for Comparative Example 4 is not provided. Therefore, the heat resistance property does not give rise to unexpected results over the claimed range. If applicant would like to argue that the mass ratio is critical to the combination of the properties as a whole, the full results for Comparative Example 4 would need to be provided. Moreover, the entire claimed ranges of components C and D are not exemplified by any of the Examples as only one amount is used for each component. One amount cannot represent an entire range. Therefore, applicant’s arguments regarding the allegation of unexpected results for the instant invention are not persuasive at this time.
Applicant also argues that Fukuda et al. and Yasumoto et al. are completely silent regarding the claimed ratios of components. This argument is unpersuasive. While it may be true that the claimed ratios are not specifically disclosed, amounts for each component are disclosed and the ratio between the components can be calculated therefrom.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 [(90+20)/10]=100/x, x = 9.1; [(90+50)/10]=100/x, x = 7.14
2 [(90+20)/0.1]=100/x, x = 0.09; [(90+50)/0.1=100/x, x = 0.07
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