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 Status
Claims 1-11 are pending.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
(p. 2-3) Applicants argue the epoxy resins defined in claim 2 comply with 35 U.S.C. 112(b). “The epoxy resins defined in claim 2 each possess an epoxide functional group, i.e., they have substantial similarity in structure and chemical reactivity and belong to the same recognized chemical class or the same art-recognized class, and they are known in the art to be functionally equivalent and to have a common use. In addition, these epoxy resins share a rigid backbone structure. Even though the main chain structures of the epoxy resins listed in claim 2 may differ, the existence of the essential epoxy group and its inherent reactivity remain consistent, ensuring uniformity in chemical behavior and technical applications. As emphasized in In re Harnisch (631 F.2d 716, 206 USPQ 300 (CCPA 1980)), "in determining the propriety of a Markush grouping, the compounds must be considered as wholes and not broken down into elements or other components." In the present case, the epoxy group in claim 2 represents not only a common structural feature but also the functional and application core of these compounds, further supporting the legality and structural similarity of these members of a Markush group.”
Claim 2 is rejected on the basis that it contains an improper Markush grouping of alternatives. A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group consisting of), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
(p. 3-4) Applicants argue the phenoxy resins defined in claim 3 comply with 35 U.S.C. 112(b). The phenoxy resins defined in claim 3 each possess a phenoxy group as the main backbone structure, and thus have substantial chemical and structural similarity, belonging to the same recognized chemical class or the same art-recognized class. In addition, these phenoxy resins all possess rigid backbone structures.
Claim 3 is rejected on the basis that it contains an improper Markush grouping of alternatives. A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group consisting of), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
(p. 6-7) Claims 1-7, 9, and 11 stand rejected under 35 U.S.C. §103 as being unpatentable over Hu et al (US 2019/0390055 Al), and further in view of Woo et al (KR 101452981 B) and Yamada et al (JP 2021/050132 A). Applicants argue, “A person skilled in the art, when reading the disclosure of Woo, would not be motivated to directly use the acid anhydride curing agent, such as cyclohexane-1,2,4-tricarboxylic acid-1,2-anhydride, as the curing agent for an epoxy resin. Instead, the skilled person would be guided to first react the acid anhydride curing agent with a polyhydric alcohol to generate a curing agent having three or more carboxyl groups, thereby ensuring excellent performance of the resulting composition. This constitutes a teaching away in Woo, as Woo teaches to avoid directly using unreacted acid anhydride curing agents. Therefore, Applicant respectfully submits that there is no teaching or motivation for one skilled in the art to combine the disclosures of Hu and Woo, particularly because these references teach away from their combination to attempt the objects as described by the present application.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Hu et al teaches examples of the anhydride include trimellitic anhydride [p. 0075] Hu et al further teaches that, in order to lower the dielectric constant of the resin, alicyclic anhydrides are preferred [p. 0076]. However, Hu et al is silent with respect to hydrogenated trimellitic anhydride. Woo, as relied upon for teaching hydrogenated trimellitic anhydride and HTMA as suitable anhydride curing agents for epoxy resins, teaches the curing agent may include a curing agent having three or more carboxyl groups and an acid anhydride curing agent [p. 0048]. Although Woo teaches the curing agent having three or more carboxyl groups is produced by the reaction of an acid anhydride curing agent and a polyhydric alcohol, the untreated acid anhydride curing agent is a separate curing agent that is used without modification [p. 0066]. Woo et al teaches the suitable acid anhydride curing agents include trimellitic anhydride and cyclohexane-1,2,4-tricarboxylic acid-1,2-anhydride (hydrogenated trimellitic anhydride, HTMA) and exemplifies the use of HTMA as a curing agent [p. 0005, 0072, 0122]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Hu et al with HTMA as Hu et al teaches alicyclic anhydrides are preferred in terms of dielectric constants.
Furthermore, In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 2 and 3 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.
Claims 2 and 3 rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claim 2 (bisphenol A epoxy resin, triphenylmethane epoxy resin, biphenyl epoxy resin, alicyclic epoxy resin) is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the epoxy resins of claim 2 do not share any further structural similarities ex. aromaticity.
The Markush grouping of claim 3 (bisphenol A-based phenoxy resin, fluorene-based phenoxy resin) is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the phenoxy resins of claim 3 do not share any further structural similarities ex. polycyclic.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (US 2019/0390055 A1), and further in view of Woo et al (KR 101452981 B*) and Yamada et al (JP 2021/050132 A*).
* all citations are directed at the English machine translation
Regarding claims 1, 4, and 7: Hu et al teaches a resin composition comprising 100 parts by weight of an epoxy resin, 1 part by weight to 100 parts by weight of a phenoxy resin, 1 part by weight to 100 parts by weight of an anhydride, and 10 parts by weight to 300 parts by weight of an inorganic filler [0012, 0079, 0074-0075, 0086].
Hu et al teaches examples of the anhydride include trimellitic anhydride [p. 0075] Hu et al further teaches that, in order to lower the dielectric constant of the resin, alicyclic anhydrides are preferred [p. 0076]. However, Hu et al is silent with respect to hydrogenated trimellitic anhydride.
Woo et al teaches an epoxy resin composition comprising an epoxy resin, a curing agent, and an inorganic filler [abstract]. Woo et al teaches the suitable acid anhydride curing agents include trimellitic anhydride and cyclohexane-1,2,4-tricarboxylic acid-1,2-anhydride (hydrogenated trimellitic anhydride, HTMA) and exemplifies the use of HTMA as a curing agent [p. 0005, 0072, 0122]. Furthermore, Woo teaches when HTMA is used as a curing agent, the curing property is good, even without adding a curing catalyst, and a colorless transparent cured product can be obtained [p. 0004].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Hu et al with HTMA as Hu et al teaches alicyclic anhydrides are preferred in terms of dielectric constants and Woo et al teaches HTMA provides a transparent colorless cured product.
Hu et al teaches the inorganic filler may include any one or more inorganic fillers useful for making a prepreg, a laminate, or a printed circuit board [p. 0086]. Hu et al teaches examples of the inorganic filler include aluminum nitride and boron nitride [p. 0086]. Hu et al is silent with respect to a sintered body of aluminum nitride and boron nitride.
Yamada et al teaches an epoxy resin composition comprising thermally conductive filler useful for electronic elements [p. 0080, 0147]. Yamada et al exemplifies the preparation of epoxy resin compositions wherein the thermally conductive filler comprises a sintered body of aluminum nitride (AlN) and boron nitride (BN) [p. 0078-0080]. Resin compositions of Yamada et al comprising a sintered body of 80/20 AlN/BN have a thermal conductivity of 16.02 W/mK [p. 0083, table 1, example A4]. In contrast, resin compositions comprising a non-sintered body of 80/20 Al/BN have a thermal conductivity of 6.94 W/mK [p. 0098, table 1, comparative example A6]. Furthermore, compositions comprising non-sintered AlN have a conductivity of 2.60 W/mK whereas compositions comprising sintered AlN have a conductivity of 4.88 W/mK [p. 0093, 0099, table 1, comparative examples A1 and A7].
In light of this, it would have been obvious to one having ordinary skill in the art to prepare the composition of Hu et al with a sintered body of 80/20 AlN/BN in order to improve the thermal conductivity of the composition as Hu et al teaches the inorganic filler may be any one or more inorganic fillers useful for making printed circuit boards. Furthermore, the ranges of these combined teachings read over the ranges of instant claims 1 and 4. 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).
Regarding claim 2: Hu et al teaches the epoxy resin may include any one or more epoxy resins suitable for making a prepreg, a laminate, or a printed circuit board, wherein examples of the epoxy resin include bisphenol A-epoxy resin and biphenyl epoxy resin [p. 0043]
Regarding claim 3: Hu et al teaches examples of the phenoxy resin include but are not limited to those sold under the tradename PKHB and PKHH from Gabriel Performance Products and YP50S sold by Nippon Steel & Sumikin Chemical, which are all bisphenol-A based phenoxy resins [p. 0080].
Regarding claim 5: Yamada et al, as relied upon for the inorganic filler of Hu et al, teaches the highly thermally conductive particles in the thermally conductive filler has an average particle size of 0.2 to 100 μm [p. 0044]
Regarding claim 6: Hu et al teaches the resin composition of the present disclosure may further comprise the following additives: curing accelerator, flame retardant, inorganic filler, solvent, toughening agent, silane coupling agent or a combination thereof [p. 0082].
Regarding claim 9: Hu et al fails to disclose the routing distance of the composition. Applicants describe the process of measuring the routing distance in [p. 0069-0070] but are silent with respect to aspects of the composition that impact the routing distance. In light of this, a person with ordinary skill in the art would expect a composition resulting from the teachings of Hu et al to obviously embrace embodiments capable of satisfying these properties as the composition of Hu et al significantly satisfies the chemical and material limitations (and amounts thereof) of the claimed composition.
Regarding claim 11: The resins exemplified by Hu et al have a copper foil peeling strength of 7.0 to 8.0 lb/in at ambient temperature [table 4, p. 0150].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (US 2019/0390055 A1) in view of Woo et al (KR 101452981 B) and Yamada et al (JP 2021/050132 A), and further in view of Takada et al (US 2014/0093736 A1).
The disclosure of Hu et al is described above and is applied here as such.
Hu et al is silent with respect to the visible light reflectivity of the composition.
Takada teaches a resin composition comprising an epoxy resin (A) having a bisphenol skeleton, an alicyclic epoxy resin (B), a hydrogenated acid anhydride (C), titanium dioxide (D), further comprising an inorganic filler (F) [p. 0022-0027]. Tanaka teaches the content of the resin constituents as parts by mass relative to 100 parts by mass in total of ingredients (A) to (C). Tanaka teaches the content of epoxy resin (A) is 5 to 90 parts by mass based on 100 parts by mass in total of the ingredients (A) to (C) [p. 0022-0025]Takada teaches the content of the titanium dioxide (D) is 10 to 250 parts by mass based on 100 parts by mass in total of the ingredients (A) to (C), wherein total amount of the titanium dioxide (D) and the inorganic filler (F) is 15 to 450 parts by mass based on 100 parts by mass in total of the ingredients (A) to (C) [p. 0026, 0028]. The composition taught by Takada has a light reflectance of 88 to 90% [table 1].
The composition taught by Takada comprises substantially similar components, and relative amounts thereof, as the composition taught by Hu et al. Therefore, a skilled artisan would reasonably expect embodiments of Hu et al to have a similar light reflectance, which makes the claimed range prima facie obvious.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (US 2019/0390055 A1) in view of Yu et al (TW l760268 B) and Yamada et al (JP 2021/050132 A), and further in view of Chen (US 20150247015 A1).
The disclosure of Hu et al is described above and is applied here as such.
Hu et al exemplifies the use of a phosphazene based flame retardant (SPB-100) in all inventive examples [table 2]. However, Hu et al is silent with respect to the flame retardancy according to UL-94.
Chen teaches an epoxy resin composition comprising a phosphazene based flame retardant (SPB-100) [abstract, p. 0019, table 1, table 2]. Chen evaluated the flame retardancy of the compositions according to UL-94, wherein all compositions had a flame retardancy of V0 [table 1, table 2].
Hu et al and Chen both teach epoxy resin compositions comprising the same flame retardant. In light of this, one having ordinary skill in the art would reasonably expect embodiments of Hu et al to embrace the claimed range of flame retardancy.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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