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 .
This Office action is in response to the amendment filed 4/1/2026. Claims 1-9, 11-14, and 16 are amended; claims 17-18 and 20 are withdrawn from consideration as being drawn to non-elected invention; claim 19 is cancelled; and claim 21 is added. Accordingly, claims 1-18 and 20-21 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recite imide extended compounds having the structures that lack clarity. Specifically, density of the color of structures of imide extended compounds is different from text of the claim. Applicant is advised to include image of structures that are clear and have the same color depth as the text. Appropriate 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.
The factual inquiries 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.
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 2, 8, 12-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Higashiguchi et al (US 2021/0147680 A1).
Regarding claims 12 and 2, Higashiguchi et al teach a resin composition comprising at least one thermosetting component “C”. The radical polymerizable thermosetting resin is a resin or compound having at least one or more functional groups selected from the group consisting of an alkenyl group, maleimide group and (meth)acryloyl group (abstract). See claim 10, wherein the thermosetting component “C” is selected from the group consisting of maleimide compound represented by formula 12:
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wherein R15 and R17 independently represent a hydrocarbon group in which 8 or more atoms are linearly linked, and R16 independently represents a substituted or unsubstituted cyclic hydrocarbon group (i.e., reads on the imide extended compound of formula
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wherein R = divalent aliphatic group, Q = aromatic group, and R2 = reactive alkenyl end group in present claim 12; and R2 comprises a maleimide group in present claim 2. The free radical polymerizable thermosetting resins can be used alone or can be used in an appropriate mixture of two or more kinds (paragraph 0178). The thermosetting resin having the alkenyl group is not particularly limited as long as it is a resin or a compound having one or more carbon-carbon double bonds and examples includes resins having (meth)allyl group such as tri(meth)allyl isocyanurate (paragraphs 0179 and 0181) which reads on the reactive monomer that is free-radically crosslinkable with reactive alkenyl end group of imide extended compound in present claim 12. The resin composition can include inorganic fillers such as fused silica (paragraph 0219) which reads on fused silica in present claim 12. The resin composition can include a variety of additives, such as flame retardants (paragraph 0240) which reads on flame retardant in present claim 12. The resin composition can further comprise a radical polymerization initiator (paragraph 0071) which reads on free radical initiator in present claim 12.
Higashiguchi et al fail to disclose in a single embodiment as in present claims a combination of imide extended compound, reactive monomer that is free-radically crosslinkable with the reactive end groups of the imide extended compound to produce a crosslinked network, free radical initiator, flame retardant and filler in presently claimed amounts.
However, Higashiguchi et al in the general disclosure teach that ratio of benzoxazine component “A” and thermosetting component “C” is 20/80 to 90/10 (abstract). The content of organic compound “B” is preferably 1 parts by mass or more and 50 parts by mass or less based on 100 parts by mass in total of the benzoxazine component “A” and thermosetting component “C” (paragraph 0171). Fillers are present in amounts of 300 parts by weight or less based on 100 parts by mass in total of the benzoxazine component “A” and thermosetting component “C” (paragraph 0224). The flame retardant is present in a range of 0.01 to 10 parts by mass based on 100 parts by mass in total of “A” and “C” (paragraph 0240-0241). The free radical initiator is present in amounts of 0.05 to 10 parts by mass based on 100 parts by mass in total of the benzoxazine component “A” and thermosetting component “C” (paragraph 0081). Therefore, given that thermosetting component “A” can be used in amounts of 10 to 80 parts by mass in relation to the benzoxazine component, organic compound “B” can be present in low amounts of 1 part by mass, fillers can be used in amounts of 300 parts by weight or less, flame retardant in a range of 0.01 to 10 parts by mass, and free radical initiator in amounts of 0.05 to 10 parts by mass, all based on 100 parts by mass in total of the benzoxazine component “A” and thermosetting component “C”, it would have been obvious to one skilled in art prior to the filing of present application to use a combination of maleimide compound, tri(meth)allyl isocyanurate, free radical initiator, fused silica, and flame retardant in overlapping ranges of 30 to 50 volume percent, 20 to 30 volume percent, 2 to 8 volume percent, 30 to 55 volume percent and 8 to 20 volume percent, respectively, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It is noted that parts by mass is not converted to volume, since they are related by the equation density = mass/volume and density is an experimental value. Since PTO cannot conduct experiments, burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 8, see claim 10, wherein the thermosetting component “C” is selected from the group consisting of maleimide compound represented by formula 12:
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wherein R15 and R17 independently represent a hydrocarbon group in which 8 or more atoms are linearly linked, and R16 independently represents a substituted or unsubstituted cyclic hydrocarbon group, and n7 represents a number of 1 or more and 10 or less (i.e., reads on
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. wherein R = divalent aliphatic group, Q = aromatic group, n = 2 to 10, and R2 = reactive alkenyl end group is maleimide in present claim 8).
Regarding claim 13, examples of fillers include fused silica (paragraph 0219) surface modified with a silane coupling agent such as ɣ-methacryloxypropyl trimethoxysilane (paragraph 0223) which reads on functionalized fused silica in present claim 13.
Regarding claim 16, in addition to 9a to 9d, examples of fillers include fused silica (paragraph 0219) surface modified with a silane coupling agent such as ɣ-methacryloxypropyl trimethoxysilane (paragraph 0223) which reads on fused silica comprises a methacrylate functionalized fused silica in present claim 16.
Claims 3 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Higashiguchi et al (US 2021/0147680 A1) in view of Mizori et al (US 2004/0225026 A1).
The discussion with respect to Higashiguchi et al in paragraph 9 above is incorporated here by reference.
Higashiguchi et al differ with respect to the species of imide extended compound.
However, Mizori et al in the same filed of endeavor teach imide-linked maleimide and polymaleimide compounds (title). Imide extended bismaleimides have the following structure:
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wherein R and Q are each independently substituted or unsubstituted aliphatic, aromatic or siloxane moieties, n is 1 to about 10 (paragraphs 0008-0011). When incorporated into a thermoset composition, the imide extended maleimide compounds reduce brittleness and increase toughness in the composition while not sacrificing thermal stability (paragraph 0007). The imide extended are present in amounts of 2 to 98 wt% based on the total weight of composition (paragraph 0079). Therefore, in light of the teachings in Mizori et al in the same filed of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to include the imide-linked maleimide and polymaleimide compounds, of Mizori et al, in overlapping amounts, in the thermoset composition, of Higashiguchi et al, for above mentioned advantages. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It is noted that parts by mass is not converted to volume, since they are related by the equation density = mass/volume and density is an experimental value. Since PTO cannot conduct experiments, burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Allowable Subject Matter
Claims 1, 4-7, 9-11 and 14-15 are allowable pending the inclusion of images of imide extended compounds in claim 1 that are clear. The cited prior art of record do not teach the imide extended compounds of claim 1.
Response to Arguments
The objections, and rejections under 35 U.S.C. 112(b), 102 and 103 as set forth in paragraphs 6, 8, 11, and 16-18, of Office action mailed 1/6/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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