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
Claims 2-5 and 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. The claims fail to disclose the weight bases for the components (SBS resin (claim 2), bismaleimide resin (claim 3), cross-linking agent (claim 4), and the modified polyphenylene ether resin (claim 5)).
Claims 2-5 and 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. The claims recite, “a weight ratio,” the term “ratio” expresses a relationship between two or more components, therefore it is unclear what the weight ratio is compared to in each claim. For instance, in claim 2, “wherein a weight ratio of the SBS resin ranges from 10 wt% to 40 wt%,” what is the SBS compared to. Clarification is needed.
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 non-obviousness.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over KANEKO et al. (U.S. Publication No. 2017/0365372, hereinafter KANEKO) in view of UERA et al. (U.S. Publication No. 2009/0312519, hereinafter UERA).
Regarding claim 1, KANEKO teaches a conductive polymer material comprising thermoplastic resin and CNF (carbon nanofiber [0036-0039]) [0087 and 0092]. Examples of the thermoplastic resin include polyphenylene ether resin, a modified polyphenylene ether resin, styrene-diene block copolymer such as SBS (styrene-butadiene-styrene block copolymer), and etc. [0087]. The thermoplastic resins may be used in combination of two or more. The material further comprises thermosetting resin such as bismaleimide resins [0090]. The conductive polymer material production method incudes a crosslinker or crosslinking coagent [0092], more specifically, 1.5 parts by mass of sulfur [0171]. The conductive polymer material is used for the production of shaped article ([0093]; Claim 12).
However, KANEKO does not teach the resin composition comprising modified polyphenylene ether resin, having following structural formula:
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144
721
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Wherein R represents a chemical group of a bisphenol compound located between two hydroxyphenyl functional groups thereof, n is an integer between 3 and 25.
In the same field of endeavor of shaped articles (insulating material for a printed wiring board, a resin for a resist, a semiconductor, packaging material, a resin for sealing semiconductor, and etc. [0073]), UERA teaches a cured product which is obtained by curing the curable resin composition [0074] wherein the composition comprises a bismaleimide represented by the formula (1) [0007-0011]:
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160
424
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748
420
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430
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(which overlaps the claimed modified polyphenylene ether resin). The bismaleimide has high heat resistance, low dielectric characteristics, excellent solvent solubility, and exhibits only a small change in dielectric characteristics even in high humidity (Abstract; [0005-0006]).
Given KANEKO teaches the composition comprises a modified polyphenylene ether resin [0087], polyphenylene ether resin [0087], and bismaleimide [0090], it would have been obvious to a person of ordinary skill in the art to have provided the modified polyphenylene ether resin of UERA with the composition of KANEKO for the benefit of obtaining a curable resin composition with high heat resistance, low dielectric characteristics, excellent solvent solubility, and exhibits only a small change in dielectric characteristics even in high humidity (Abstract; [0005 and 0006]). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over KANEKO et al. (U.S. Publication No. 2017/0365372, hereinafter KANEKO) in view of UERA et al. (U.S. Publication No. 2009/0312519, hereinafter UERA) in further view of CN 102481598A (hereinafter, PAUL).
Regarding claims 6 and 7, the combined disclosures substantially teaches the present invention, see paragraphs 8-11 above. More specifically, KANEKO teaches a conductive polymer material comprising thermoplastic resin and CNF (carbon nanofiber [0036-0039]) [0087 and 0092]. The conductive polymer material production method incudes a crosslinker or crosslinking coagent [0092]. The material further comprises various additives [0092].
In the same field of a conductive polymer material (i.e., polymer dielectric material for electrical articles) (p. 4), PAUL teaches curing agent including peroxide (pp. 12-13), flame retardant (p. 13), silicone dioxide powder (Table 3; p. 21), and coupling agents such as silane (p. 10). The curing agent including peroxide in the amount of from about 0.1 wt% to about 5 wt% (p. 13) (which is within the claimed range).
The additives provides electrical properties including dielectric constant, dissipation factor, dielectric loss, and /or other desired properties (p. 12).
Given KANEKO teaches the conductive polymer material further comprises curing agent (peroxide) and various additives [0092], it would have been obvious to a person of ordinary skill in the art to have provided the curing agent and various additives of PAUL with the conductive polymer material of KANEKO for the benefit of obtaining electrical properties as taught by PAUL. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 8-10, PAUL teaches peroxide, therefore, the claims are met because other optional components (i.e., flame retardant, silicon dioxide, silicone coupling agent, or a combination thereof.) are optional.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763