DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. 111143478 filed 11/15/2022, which papers have been placed of record in the file.
Claims 1-12 are pending.
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 4-5 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.
Claim 4 recites the formula:
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Wherein C is one selected from biphenyl, naphthalene ring, and bisphenol A. The specification includes several examples of the claimed formula, including BMI-2300 exemplified in the working examples.
Per Yamamoto et al. (US 2025/0270372), BMI-2300 has the general structure
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which is not within the scope of the claimed formula (I) wherein C is selected from biphenyl, naphthalene ring and bisphenol A. For purposes of Examination, BMI-2300 having the formula
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will be considered to meet the claimed formula (I) of claim 4.
Claim 5 is subsumed by this rejection because of its dependence.
Appropriate correction and/or clarification 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2022/0056225) in view of Xu et al. (US 2023/0099943).
Regarding claim 1: Chen is directed to a resin composition comprising:
A resin base comprising a bismaleimide resin, a benzoxazine resin, and epoxy resin including a naphthol type epoxy resin ([0028] [0066]),
An inorganic filler including strontium titanate ([0039] [0042]) and
A silane coupling agent is mentioned, although a siloxane coupling agent in particular is not mentioned.
Xu is directed to a resin composition comprising a resin base a bismaleimide resin, a benzoxazine resin, and a naphthalene epoxy resin ([0082] [0084] Xu) and an inorganic filler ([0094] Xu), wherein the silane coupling agent includes siloxanes ([0102] Xu). One skilled in the art would have been motivated to have selected a siloxane and the silane of choice in Chen since Chen teaches the coupling agent is a silane coupling agent, and Xu teaches suitable silanes include siloxanes. Therefore, it would have been obvious to one skilled in the art at the time the invention was made to have selected a siloxane as the silane of choice in Chen.
Regarding claim 2: While calcium doped strontium titanate is not mentioned, claim 1 lists strontium titanate or calcium doped strontium titanate in the alternative. Therefore, claim 2 is met by Chen since strontium titanate is disclosed.
Regarding claim 3: The composition comprises 15-50 parts by weight bismaleimide resin, 15-30 parts by weight of the benzoxazine resin, 15-30 parts by weight of the epoxy resin including the naphthalene epoxy resin ([0019]). Specific examples 3 and 6 comprise about 50 % by weight bismaleimide resin, about 30% by weight of the benzoxazine resin, and about 15% by weight of the naphthalene epoxy resin, based on a total weight of the resin base.
Regarding claim 4: A bismaleimide
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(equivalent to the claimed formula (I) wherein C is a biphenyl. See pending rejection above under 35 USC 112).
Regarding claim 5: R1 and R2 of formula I include methyl and ethyl. While Chen doesn’t mention a single bismaleimide simultaneously comprising the aforementioned R1 and R2 in a single bismaleimide, it would have been obvious to have selected such a bismaleimide since Chen discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Regarding claim 6: Chen discloses epoxy resins include naphthalene epoxy resins. Per J. Liu et al. (Mater. Today Commun. 33(2022)104483), a naphthalene epoxy resin has the formula (II) wherein R is a naphthalene ring derivative.
Regarding claim 7: The composition comprises 100-300 parts by weight filler ([0038]).
Regarding claim 8: The silane coupling agent is present in an amount of 0.1-5 parts by weight based on 100 parts inorganic filler.
Regarding claim 9: An amount of 0 part by weight hardener is within the scope of Chen.
Regarding claim 10: A primary amine salt of boron trifluoride monoethylamine curing accelerator is disclosed ([0036] Chen). Alternatively, an amount of 0 part by weight hardener is disclosed.
Regarding claim 11: An amount of catalyst of 0 part by weight is within the scope of Chen.
Regarding claim 12: The compositions are used as a substrate. A dielectric constant of the substrate greater than 9.
Chen doesn't specifically recite a dielectric constant of the substrate is greater than or equal to 9. However, the composition produced in Chen is substantially identical to the composition produced in the instant specification invention. Specifically, the filler including strontium titanate can be included in an amount of up to 300 parts by weight. This is substantially identical to the present composition comprising strontium titanate in claimed amounts resulting in the claimed dielectric constant of at least 9.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Chen suggests a composition having a dielectric constant within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764