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 .
Election/Restrictions
Applicant's election with traverse of group I, dicyclopentadiene, styrene, divinylbenzene, TAIC, Perbutyl P, Ricon 100, SVC, polyphenylene ether resins, copper foil substrate, silane adhesive in the reply filed on 1/8/26 is acknowledged. There are no arguments drawn to the traversal. This is not found persuasive because the 2 groups are properly restricted as product and process of making and the process can be used to make materially different products such as polymerizing individual components in order to make a block terpolymer or mixing 2 monomers together and polymerizing and adding a third. The species may be independent or distinct for those reasons set forth in the restriction dated 11/10/25, page 5.
The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/10/25.
Priority
The provisional application does not support the breadth of the claims, and, the foreign priority is not in English, thus the claims have an effective date of the filing of the instant application 3/30/23
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/18/26, 12/16/25, 11/24/25, 8/6/24, 4/12/24, 1/26/24 have been considered by the examiner. The reference lined through on the IDS dated 8/6/24 was not in English. The third party submission filed 10/30/25 has been considered by the examiner.
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, 5, 15, 19, and their dependents, 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 5 claim “the bridged ring monomer compound” which lack antecedent basis. Claim 1 claims “bridged ring monomer compounds.”
Claims 15 and 19 have the limitation “further comprising other resin polymers….0-99”. The claim requires the other resin polymers while including the use of no other resin polymers. Thus the claim is indefinite.
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 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.
Claim(s) 1-12, 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawabe (JP2018/039995A-full English translation of description and claims provided and used below).
Kawabe discloses polyfunctional vinyl aromatic copolymers (title). Said copolymers comprise 2-98mol% divinylaromatic monomer [embracing (c) of claim 1], 2-98mol% monovinyl aromatic monomer [embracing (b) of claim 1] and 3-300 mol% cycloolefin (last paragraph of page 7 of the provided translation). The cycloolefin may be dicyclopentadiene (page 6, para 4) [embracing (a) of claim 1]. The 3 monomers making up a terpolymer [meeting the hydrocarbon resin polymer of claim 1].
In light of the overlapping nature of the mol% and the instant claims a prima facie case of obviousness exists over claim 1.
Dicyclopentadiene meets claims 2-5. The mol% of cycloolefin and divinylaromatic compound combined embrace the use of 13mol% or more combined, as required by claim 6. The mol% ranges above embrace claims 7-9. Since the crosslinking degree of divinylaromatic compound is directly related of the mol% of divinylaromatic compound used, and, since the mol% of divinylaromatic compound of claim 1 is embraced, the crosslinking degree of claim 10 must be embraced. Likewise the hydrogen atom content in reactive double bonds in the polymer is directly related to the mol% of monomers used. Since the above mol% embrace that of claim 1, this limitation must also be embraced by the reference. The Mn of the polymer ranges from 300-100,000 (page 3 para 3), as required by claim 12. Elements above meet claim 14. The polymer may be mixed with other polymer resins such as polyphenylene ether (page 9 para 7), in amounts from 30-99.9% by mass (page 15 para 2) wherein a 50wt% of each equates to a 1:1 ratio, embracing claims 15-16. Other additives can be included (page 15 para 2), as required by claim 17. The composition may be used in a laminate (page 16 para 5) on a metal foil such as a copper foil (page 16 para 5). The laminate comprising an adhesive to adhere the polymer composition to the metal foil (page 17, last 2 para), the copper foil being the base, as required by claims 18-20.
Claim(s) 1-12, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao.
Liao discloses vinyl containing aromatic alicyclic copolymers (abstract). Said copolymers comprise 10-40 mol% alicyclic monomer [corresponding to the bridged ring monomer of claim 1), 10-40 mol% vinyl content [corresponding to the divinyl compound C of claim 1) and 20-90 mol% styrene [corresponding to the monovinyl aromatic compound B). The alicyclic monomer is exemplified to be dicyclopentadiene (Table 1), the vinyl monomer is exemplified to be divinylbenzene (table 1), meeting the elected species of bridged ring monomer and divinyl aromatic monomer. The mol% above embrace and thusly render prima facie obvious the A, B, C requirements of claim 1. See In re Wertheim.
Dicyclopentadiene meets claims 2-6. The above mol% of [0014] embrace a total of alicyclic (bridged ring A) and vinyl content (divinylmonomer) of 20-80 mol% (e.g. 10-40 mol% alicyclic compound plus 10-40 mol% vinyl content monomer), thus embracing claim 6. Elements above embrace claims 7-9, 14. Since the mol% of the monomers are directly related to the crosslinking degree and hydrogen atom content, the requirements of claims 10-11 are embraced by the reference. The MW of the polymer ranges from 2000-6000 [0013], embracing and rendering obvious the requirements of claim 12.
Table 2 exemplifies 19 wt% polyphenylene ether resin mixed with 11.2 wt% of the prepared resins, which is a ratio of 1:1.73, meeting claims 15 and 16. Table 2 exemplifies using initiator and additives, meeting claim 17 to form an end substrate meeting claims 18-19.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao in view of Kawabe.
Liao includes elements as set forth above. Liao discloses copolymers of bridged ring monomers, styrene and divinyl aromatic monomers used in combination with polyphenylene ether resins to form copper foil substrates (see [0047] that discloses the copper foil substrates). Liao discloses impregnating and hot pressing to form said substrates but does not disclose the use of a base layer, adhesive, and resin mixture on top.
Kawabe includes elements as set forth above. Kawabe discloses copolymers of bridged ring monomers, styrene and divinyl aromatic monomers, the same copolymers as Liao. Kawabe mixes such with polyphenylene ether resins, akin to Liao, and forms substrates with copper foil. Kawabe discloses these substrates to comprise a copper foil base layer, an adhesive, and the resin mixture applied thereon. Kawabe thusly teaches a different, suitably known method of making copper foil substrates using the same polymer resin mixture.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Liao the use of a copper foil substrate, adhesive, and applying the resin composition on top, as taught by Kawabe since such amounts to combining prior art elements according to known methods to yield predictable results and/or obvious to try from a finite number of identified predictable solutions with a reasonable expectation of success. See MPEP 2143A, E.
Elements above meet claim 20.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-9, 11, 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6 of copending Application No. 18/812277 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 4 of ‘277 meet instant claims 1, 6-9, 15, claim 6 of ‘277 further meets instant claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA BLAND/ Primary Examiner, Art Unit 1759