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 § 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, 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh (US20160297779, herein Hsieh), in the view of Fukuda (US20190322858, herein Fukuda).
Regarding Claims 1, 3-7, Hsieh teaches “The resin composition of the present disclosure may further comprise a toughening agent to improve the toughness of the resin composition” [0048], comprising:
Both “bisphenol A type benzoxazine resin” [0050], which is LZ 8290: bisphenol A type benzoxazine resin (BPA-Bz) [0069] and used in example 6 [P7; Table 1] and the modified oxazine compound formula (9) [0008] as modified bisphenol A type benzoxazine resin, structure see below, bisphenol A type benzoxazine resin (BPA-Bz) [0069] and the modified oxazine compound formula (9) [0008] both fall into the bisphenol A type benzoxazine resins.
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and “crosslinking agent.” [0024] include: “isocyanate” [0026], which is “1,4-cyclohexane diisocyanate” [0030]; polyolefin [0026], such as styrene-butadiene-maleic anhydride terpolymer [0037], which reads on the anhydride grafted olefin polymer.
Hsieh teaches polyolefin [0026], such as styrene-butadiene-maleic anhydride terpolymer [0037], which is anhydride grated styrene-butadiene polymer, but does not explicitly teach the wherein the anhydride grafted olefin polymer comprises: styrene-ethylene/butylene-styrene copolymer grafted maleic anhydride, polypropylene grafted maleic anhydride or polyethylene grafted maleic anhydride. However, Fukuda teaches acid-modified group-grafted acid-modified polyolefin resins [0152] derived from: olefin-styrene copolymers include a styrene-butadiene copolymer [0157] and maleic anhydride [0159], which is maleic anhydride-grafted styrene-butadiene copolymer; ethylene-maleic anhydride copolymer; and ethylene-maleic anhydride copolymer, propylene-maleic anhydride copolymer [0165] all with low dielectric characteristics [0167]. Because both the styrene-butadiene-maleic anhydride terpolymer [0037] as taught by Hsieh and the acid-modified group-grafted acid-modified polyolefin resins [0152] derived from: olefin-styrene copolymers include a styrene-butadiene copolymer [0157] and maleic anhydride [0159], which is maleic anhydride-grafted styrene-butadiene copolymer; ethylene-maleic anhydride copolymer, propylene-maleic anhydride copolymer [0165] taught by Fuduka are known in the art to be useful for improve the dielectric property of the thermoset composition, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the ethylene-maleic anhydride copolymer, propylene-maleic anhydride copolymer [0165], and would have been motivated to do so because both compounds individually are known to be effective dielectric modifier to the epoxy based thermosetting composition. (see MPEP 2144.06).
Hsieh explicitly teaches the crosslinking agent as set forth above, hence, it would have been obvious to combine these as equivalent crosslinking agents [0024]. The purpose of crosslinking agents is to react and bond with the material being crosslinked.
Additionally, combining reactants identical to those of the claims under the processing conditions suggested by Hsieh (i.e. pressing at 210°C for 2 hours [0087]) will necessarily result in the claimed reaction product.
Hsieh further teaches “bismaleimide” [0080] reads on the thermosetting polymer.
Regarding Claims 2, 15-20, Hsieh teaches the ranges of:
“E7: Oxazine resin 25 parts by weight; styrene-maleic anhydride copolymer 20 parts by weight; cyanate resin 5 parts by weight” [P7; Table 1], wherein the toughened and modified compound concentration is 25+20+5=50 parts by weight.
“Homide125: bismaleimide 15 parts by weight” [P7; Table 1], wherein the ratio between toughened and modified compound and thermosetting polymer is 50/15, lies in the claimed range, which is 30/15 to 50/8.
Regarding Claims 8-14, Hsieh teaches “The inorganic filler may include silica” [0046], wherein the range is “E7: silica 50 parts by weight” [P7; Table 1].
Response to Arguments
Applicant’s arguments, filed 11/24/2025, 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 Hsieh (US20160297779, herein Hsieh), and Fukuda (US20190322858, herein Fukuda), as set forth in the new rejection above.
In response to applicant's argument that “Hsieh teaches away from using conventional benzoxazine compounds such as bisphenol A-type and bisphenol F-type benzoxazine compounds”, is not persuasive.
In fact, Hsieh not only teaches “bisphenol A type benzoxazine resin” [0050], which is LZ 8290: bisphenol A type benzoxazine resin (BPA-Bz) [0069] and used in example 6 [P7; Table 1] but also teaches the modified oxazine compound formula (9) [0008] as modified bisphenol A type benzoxazine resin, structure see below:
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bisphenol A type benzoxazine resin (BPA-Bz) [0069] and the modified oxazine compound formula (9) [0008] taught by Hsieh are both fall into the bisphenol A type benzoxazine resins and further collectively meet the bisphenol A type benzoxazine from instant application specification, which lead to the desired property of the copper clad laminate or the printed circuit board made from the prepreg or the resin film has characteristics such as low dissipation factor, high temperature resistance, and high flame retardant [0004] as taught by Hsieh, can further meet prepregs were laminated; copper foil laminate [Instant App. US20230348708; 0048] with the excellent heat resistance and mechanical properties [Instant App. US20230348708; 0016].
Hence, Hsieh does not teach away the instant application.
In response to applicant's argument that “Hsieh fails to disclose, teach or suggest that "the diisocyanate compound forms a bond with the polybenzoxazine compound and the anhydride grafted olefin polymer, respectively”, is not persuasive.
In fact, first, Hsieh teaches all the ingredients and the amounts of the toughened resin composition as set forth in the rejection above.
Second, Hsieh explicitly teaches the “crosslinking agent.” [0024] include: “isocyanate” [0026], which is “1,4-cyclohexane diisocyanate” [0030]; polyolefin [0026], hence, it would have been obvious to combine these as equivalent crosslinking agents [0024]. The purpose of crosslinking agents is to react and bond with the material being crosslinked.
Third, combining reactants identical to those of the claims under the processing conditions suggested by Hsieh (i.e. pressing at 210°C for 2 hours [0087]) will necessarily result in the claimed reaction product.
The applicant's argument that “excellent results” is not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness.
In this case, the claim 14 is open to the wherein the filler is 40 to 60 parts by weight. However, Examples 1-10 and Comparative Examples 1-6 only include single value of the silica concentrations, namely 40%. Therefore, these examples are not commensurate in scope with the claims 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).
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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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