DETAILED ACTION
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The term “low” in claim 1 is a relative term which renders the claim indefinite. The term “low dielectric” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 and claim 6 recite “proportion of xx% to xx%”. However, it is unclear if the percentage is based on molar or weight or something else. For purposes of expediting prosecution, it is interpreted as by weight.
Claim 1 recites a resin having a styrene proportion, a divinylbenzene proportion and an ethylene proportion. It is unclear if the resin is a mixture of those monomers or the resin has repeating units derived from those monomers. For purposes of expediting prosecution, it is interpreted as a resin has repeating units derived from those monomers.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites the amount of SBS resin is 0wt% to 35wt%. However, claim 6 recites “further comprising a SBS resin”. Claim 7 broadens the scope of claim 6.
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.
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 1-4, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai (US 2023/0287222, equivalent with WO2022014599) in view of Arai (WO2021112087).
Claims 1-4: Arai ’222 teaches a composition comprising an oligomer, a curing agent, a polyphenylene ether resin, a phosphorus based flame retardant, fused silica and a silane coupling agent [0095, abstract, 0092, 0097]. The oligomer has Mn of 500-5000, contains 10-60wt% of styrene, 1.5-10 pieces per number average molecular weight of divinylbenzene and olefin monomers [0032-0037]. When the oligomer has Mn of 2100 and contains 2.5 pieces of divinylbenzene the content of divinylbenzene is 15.5wt% (2.5*130/2100); when the oligomer has Mn of 2100 and contains 10 pieces of divinylbenzene the content of divinylbenzene is 62wt% (10*130/2100). Arai further teaches the olefin monomers can be a mixture of ethylene and less than 6wt% of another olefin monomer [0044]. Therefore, the content of each monomer would overlap the claimed range.
The curing agent is used 0.01-10 parts per 100 parts by mass of the composition [0068], polyphenylene ether resin is 1-200 parts by mass per 100 parts of the oligomer [0073], silica is less than 400 parts per 100 parts of the oligomer [0092]. The flame retardant is 1-100 parts per 100 parts of the resin composition [0096]. Silane is 0.1-5 parts per 100 parts by mass of the resin composition [0097]. Case law holds that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Arai ‘222 does not teach the fused silica is in spherical shape.
However, Arai ‘087 discloses a similar composition and teaches the fused silica can be Denka SFP-130MC which is in spherical shape [0100]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize spherical fused silica for the composition of Arai ‘222 to obtain various advantages such as improved fluidity in resin filler applications and high content filling.
Claim 10: Arai ‘222 is silent with respect to the dielectric constant and a dissipation factor of the composition. However, the combination of teachings from Arai ‘222 and Arai ‘087 have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Allowable Subject Matter
Claims 5-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No.18/357,167. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘167 claims a composition comprising a copolymer of styrene, divinylbenzene and ethylene, a crosslinking agent, a polyphenylene ether resin, a flame retardant, a silica and a siloxane coupling agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/WENWEN CAI/Primary Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763