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 .
In view of applicants amendment, the rejection of record is overcome. New reference is applied to meet requirements of the instant claims 1-7.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Amou (US 2004/0048965).
With respect to claim 1, Amou discloses composition comprising crosslinking agents which can be utilized in combination [0047]. The crosslinking agents are selected from compounds having structural formulae as depicted in Table 1 [0047]. Specifically, one of the crosslinking agent has formula:
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90
312
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Greyscale
Which meets applicant’s limitation of bis(vinylphenyl) ethane (BVPE). Second crosslinking agent disclosed in the same table is:
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82
426
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Greyscale
Which meets instant formula 1, herein n is at least 1, and the molecular weight of the crosslinker is not more than 1000 in order to obtain a composition having low dielectric loss tangent.
While the ratio of the two components when used in combination is not explicitly taught, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Amou discloses compound of formula 1 and BVPE as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine compound of formula 1 and BVPE in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
With respect to claim 2, while Amou discloses making a varnish, the limitation of the claim itself is directed to a product and not the composition as such claim 2 does not further limit the composition of the instant invention itself. Having said that the composition of Amou has increased storage stability with use of polymerization inhibitor [0068] in an amount of 0.0005-5 per amount of the entire composition which is also utilized in the instant invention.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. here claims only require compound of formula (1) in any amount and BVPE in any amount including 1:1 ratio). Therefore, the claimed effects and physical properties, i.e. (storage stability) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
With respect to claim 3, in addition to disclosed above polymerization inhibitor, Amou uses fillers [0024], curing catalyst [0025], polymers such as polyphenylene oxide and the like [0053-0056], wherein elastomeric component meets the definition of toughening agent, solvents [0044] and the like.
With respect to claim 4, as title suggests, the composition of Amou can be utilized to make resin film, coper clad laminates and electrical parts [0017] such as wiring boards [0060]. Additionally, statement directed at impregnating glass cloth meets the limitation of prepreg [0070].
With respect to claim 5, while Amou does not explicitly teach temperature coefficient of dielectric constant following is stated:
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. compound of formula 1 and BVPE in claimed ratio, wherein 1:1 ratio is met). Therefore, the claimed effects and physical properties, i.e. (temperature coefficient of dielectric constant) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
With respect to claim 6, the composition of Amou has low dielectric constant, specifically one sample includes 2.36 at 10 GHz cavity resonance [0042]. While Amou does not disclose the JIS standard or its equivalent with which the dielectric constant is measures, the frequency at which the measurement is made is the same and the equipment utilized can be used to measure dielectric constant according to claimed JIS standard.
With respect to claim 7, while Amou does not disclose the delamination after subjecting the article to a solder floating test Amou teaches using crosslinking agents and lowering the melting point to obtain good flowability at relatively low temperatures [0044] along with high molecular weight polymer such as polyphylene oxide (polyphenylene ether) the crosslinking component results in improved film forming property and mechanical strength [0049]. Wherein polypheylene ethers have high heat decomposition temperature [0056] which further increases adhesive property. In the end the same articles are formed by Amou as they are in the instant invention.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. compound of Formula 1 and BVPE in claimed ratio wherein 1:1 ratio is met by Amou). Therefore, the claimed effects and physical properties, i.e. (delamination according to IPC-TM-650 2.4.13.1) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that composition comprising two crosslinking agents as depicted in claim 1, in met by the rejection ratio of 1:1 is already taught by Amou, to make the same type of article, having low dielectric constant in the same range as such other properties would also be met based on the discussion above.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 February 9, 2026