DETAILED ACTION
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 § 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 1-9 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In this case, the structures for “I” in the claim 1 (Claim 1; the 10th line) appear to be missing a bond or free radical for each oxygen attached to the Nitrogen. Correction is required.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabe et. al., (JP2018039995, herein Kawabe, a machine translation is being used for citation purpose), in the view of Dershem et. al., (US6121358, herein Dershem).
Regarding Claims 1, 3, Kawabe teaches vinyl-containing aromatic alicyclic copolymer formation via 2 to 98 mol % of a divinylaromatic compound, 2 to 98 mol % of a monovinyl aromatic compound, and 3 to 300 mol % of a cycloolefin compound are used, relative to 100 mol % in total of the divinylaromatic compound and the monovinyl aromatic compound [0033], overlap the claimed ranges, wherein, the divinylaromatic compound is divinylbenzene [0034] reads on the R1 below,
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359
640
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137
122
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the monovinyl aromatic compound is styrene [0035], reads on the R2 below:
the cycloolefin compound (c) is dicyclopentadiene [0036] which is aromatic alicyclic content, reads on the R3 below:
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426
537
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Kawabe is silent on the component I. However, Dershem teaches 2,2,6,6-tetramethyl-1-
piperidinyloxy, free radical (TEMPO) [C22; L23], structure see below, reads on the first chemical formula of claim 1; the 10th line:
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329
542
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Kawabe and Dershem are considered to be analogous art relevant to the claimed invention because they are concerned with similar technical difficulty, namely, styrene, dicyclopentadiene based copolymer formation toward good dielectric property and heat resistance. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have add the 2,2,6,6-tetramethyl-1-piperidinyloxy, free radical (TEMPO) [C22; L23], which serves as inhibitor [C13; L50], into the specific vinyl-containing aromatic alicyclic copolymer as taught by Kawabe, wherein, the free radical inhibitor is known as capable of via preventing unintended polymerization, which can lead to the copolymerization process optimization as Dershem demonstrates that the use of TEMPO facilitates nearly quantitative conversion of DCPD to the acrylate derivative thereof. [C25; L1], further lead to the compositions based on defined vinyl monomers have excellent moisture resistance, excellent handling properties, and excellent performance properties (e.g., good dielectric properties). [C3; L61].
Kawabe explicitly teaches the polyfunctional vinyl aromatic copolymer preferably has a number average molecular weight Mn of 500 to 10,000 [0022] encompasses the claimed range. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have the polyfunctional vinyl aromatic copolymer preferably has a number average molecular weight Mn of 500 to 10,000 [0022] as taught by Kawabe, and TEMPO (2,2,6,6-Tetramethylpiperidine 1-oxyl) is 156.25 g/mol as taught by Dershem, based on the individual monomers’ molecular weights of Divinylbenzene 139.19 g/mol; styrene 104.15 g/mol; dicyclopentadiene 132.20 g/mol can further collectively lead to the claimed integers ranges of x, y, z.
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).
Claims 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabe et. al., (JP2018039995, herein Kawabe, a machine translation is being used for citation purpose), and Dershem et. al., (US6121358, herein Dershem) as applied in claim 1, in the view of Liu et. al., (US20170260367, herein Liu).
Regarding Claims 4-7, Kawabe and Dershem teach the vinyl-containing aromatic alicyclic copolymer as set forth in claim 1 above. Kawabe teaches polyphenylene ether resin [0062]; triallyl isocyanurate (TAIC) [0107]; inorganic fillers include silica [0109] in the range of 20 to 70% by mass [0110] overlaps the claimed range; phosphorus-based flame retardants [0111], in the range of 20% by mass or more [0108]. Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized amounts of phosphorus-based flame retardants, in the range of 20% by mass or more with a reasonable expectation of success, and would have been motivated to do as Kawabe discloses that such amounts are suitable for the invention.
Kawabe teaches maleimide resins [0062], but does not teach the specific bismaleimide resin and the range. However, Liu teaches “resin system a4; bismaleimide resin BMI 5 parts by weight” [P6; Table 1]; “the resin composition Example 7: flame retardant: 5 parts by weight; silica powder 30 parts by weight” [P7; Table 2], wherein the bismaleimide resin concentration is 5/(105+16+5+30)=3.21% which is close to the content of the bismaleimide resin 5 wt % as claimed.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05.
Kawabe teaches vinyl aromatic copolymer [0001]; polyphenylene ether resin [0062]; triallyl isocyanurate (TAIC) [0107], but does not specifically teach the ranges. However, Liu teaches “resin system a4: elastomer Ricon 150; Ricon 100; D1118K” [P6; Table 1], which read on vinyl based polymer, Liu further teaches “the resin composition Example 7: flame retardant: 5 parts by weight; silica powder 30 parts by weight” [P7; Table 2]. Hence, the vinyl based polymer concentration is (10+5+5)/(105+16+5+30)=12.82% lies in the claimed range;
Liu teaches the “SA9000: 30 parts by weight and OPE-2st: 30 parts by weight” [P6; Table 1], wherein the polyphenylene ether resin concentration is (30+30)/(105+16+5+30)=38.46%, which is close to the content of the polyphenylene ether resin 30 wt % as claimed.
Liu further teaches “TAIC 20 parts by weight” [P6; Table 1], wherein the triallyl isocyanurate concentration is 20/(105+16+5+30)=12.82% lies in the claimed range.
“bismaleimide resin BMI 5 parts by weight” [P6; Table 1], wherein the bismaleimide resin concentration is 5/(105+16+5+30)=3.21% which is close to the content of the bismaleimide resin 5 wt % as claimed.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05.
Kawabe and Liu are considered to be analogous art relevant to the claimed invention because they are concerned with similar technical difficulty, namely, vinyl copolymer based functional resin composition toward heat resistance. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Kawabe and add the teaching of Liu, i.e., the ranges of the vinyl aromatic copolymer; polyphenylene ether resin; triallyl isocyanurate; bismaleimide resin, which can collectively lead to a desirable property as of “satisfactory physicochemical properties and excellent flame retardance, heat resistance and peeling strength without adversely affecting their electrical properties.” [0016] as taught by Liu.
Regarding Claim 8, Kawabe, Dershem and Liu teach the resin composition as set forth in claim 4 above. Kawabe teaches the cured product is obtained via impregnating and hot press molded. [0115] reads on the claimed processing.
Regarding Claim 9, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kawabe, Dershem and Liu teach all of the claimed ingredients, in the claimed amounts, and Kawabe teaches the composition as being made by a substantially similar process as of the cured product is obtained via impregnating and hot press molded [0115]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. Tg, dielectric constant Dk and dielectric loss Df, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant’s arguments, filed 10/2/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 102(a)(1) 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 Kawabe et. al., (JP2018039995, herein Kawabe, a machine translation is being used for citation purpose), and Dershem et. al., (US6121358, herein Dershem).
In this case, Kawabe and Dershem collectively teach the vinyl-containing aromatic alicyclic copolymer as set forth in the new rejection above.
Additionally, regard to the “advantageous properties and combination”, this argument is not persuasive. In fact, When Examples 1-6 and Comp. Examples 1-6, are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 7 is open to the content of the content of the bismaleimide resin is 5 wt % to 20 wt %. However, Examples 1-6 and Comp. Examples 1-6 only use the single value 4.2%. Hence, these ranges are not reasonably commensurate in scope with the claimed ranges. Examples 1-6 and Comp. Examples 1-6 are therefore insufficient 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).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767