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. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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 appl icant regards as his invention. Claim FILLIN "Enter claim indentification information" \* MERGEFORMAT 13 is 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 13 is directed to a method for mixing components of the composition of claim 1, and calls for “a benzoxazine compound”, “an epoxy compound”, and “a phenolic curing agent”. However, because of the use of “a” and “an”, it is unclear whether the applicant intends these components to be the ones used in claim 1, or to be in addition to the components listed in claim 1. As such, this ambiguity renders the claim to be indefinite. For the purposes of examination, either of the listed possibilities may be used. The applicant is required to correct the claim language to remove the ambiguity. If the applicant intends these components to be the ones listed in claim 1, this ambiguity can be corrected by replacing “a” and “an” with “the”. 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. 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 . Claims FILLIN "Insert the claim numbers which are under rejection." \d "[ 1 ]" 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over FILLIN "Insert the prior art relied upon." \d "[ 2 ]" Nishiya (JP2019-019217, using JPO Machine Translation) . Regarding Claim 1, Nishiya teaches a composition that includes a benzoxazine compound, an epoxy compound (Abstract, Paragraph 10) and additionally includes a curing agent, which can be a polyfunctional phenol (Paragraph 34) and further demonstrates the use of bis(4-hydroxyphenyl)sulfide in the examples (Paragraph 65). Nishiya further teaches that the amount of the epoxy compound is between 5 and 150 parts by mass relative to the benzoxazine component (Paragraph 33) and that the curing agent is between 1 part and 30 parts by mass relative to the total of the epoxy compound and the benzoxazine compound (Paragraph 35). Based upon these ranges, the amount of epoxy compound used by Nishiya would overlap with the range of the instant claim. As Nishiya teaches that these ranges should be adhered to afford good heat resistance (Paragraph 33) and efficient reactions (Paragraph 35), the ordinarily skilled artisan would have ample motivation to stay within these ranges. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. With regard to the requirement of the benzoxazine rings plus hydroxyl groups divided by the number of epoxy groups, Nishiya teaches using these components in amounts that would yield values of 1.33 (Example 1, Table 1) and 1.38 (Example 1, Table 2), which meet the requirements of the instant claim. Regarding Claim 2, Nishiya teaches the use of benzoxazine compounds with the following structures: where R is an alkyl chain of 1 to 12 carbons, a cyclic alkyl of 3 to 8 carbons, an aryl group of 6 to 14 carbons, or an alkyl chain with up to 12 carbons and containing a halogen (Paragraph 10), X can be hydrogen or an alkyl chain of up to 8 carbons and Y can be an alkyl chain up to 8 carbons that may contain an oxygen, sulfur, sulfoxide, or carbonyl group (Paragraph 14) . In structure 2, L can be up to 10 carbons and contain oxygen and/or sulfur (Paragraph 10). Regarding Claims 3-5, Nishiya teaches the use of norbornane containing epoxy compounds with the following structures: which meet the requirements of the instant claims. Regarding Claims 6 and 7, Nishiya teaches the use of silane coupling agents (Paragraph 36) and further teaches that the coupling agent preferably contains one or more amines (Paragraph 38) which may be primary, secondary, or tertiary (Paragraph 38). Nishiya also teaches that primary and secondary amines are more preferred (Paragraph 40). As the amine groups would be reactive with the epoxy groups of the composition, it would logically follow that the presence of more than one amine would improve the reactivity of the coupling agent. Further, it would necessarily follow that based upon the preferred structure disclosed by Nishiya : the inclusion of more than one amine would have to occur on a single substituent, meaning that at least one of the amines would likely have to be secondary. As a result, it would have been obvious prior to the effective filing date of the instant application to have used a silane coupling agent that contained primary and secondary amines (the preferred groups of Nishiya ) . Regarding Claim 8, Nishiya teaches that the composition may contain a curing accelerator (Paragraph 48). Regarding Claims 9 and 10, Nishiya teaches that inorganic fillers may be used (Paragraph 45) in amounts most preferably between 400 and 950 parts by mass relative to the other components which total 100 parts by mass (Paragraph 47). This results in a range of 80 to 90% by mass of the composition, which is contained within the range of the instant claims. Regarding Claims 11 and 12, Nishiya teaches that the composition is a curable resin (Paragraph 53) and is used to support a semiconductor element which is “disposed in the cured product” (Paragraph 57). Regarding Claims 13 and 14, Nishiya teaches the composition required by the instant claim as discussed above in regard to claim 1. Further , Nishiya teaches that the composition is processed into powder or pellet (Paragraph 52) and that it can include the coupling agent, curing accelerator, and inorganic filler (Paragraph 52). Regarding Claim 15, Nishiya teaches that the composition is cured at a temperature of between 180 and 300 °C for 1 to 60 minutes (Paragraph 56) and that in most cases while 1 to 3 minutes is sufficient, however the composition can be cured up to 60 minutes (Paragraph 56). 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 . Claim FILLIN "Pluralize \“Claim\” if necessary, insert \“is\” or \“are\” as appropriate, and insert the claim number(s) which are under rejection." s 1-5, 8-9, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim FILLIN "Pluralize \“Claim\” if necessary, and insert the claim number(s) of the U.S. Patent." s 1-20 of U.S. Patent No. FILLIN "Insert the number of the patent." 11,897,998 . Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent 11,897,998 requires the use of similar components, including the benzoxazine compound, a norbornane-containing epoxy, a curing agent which can be a polyfunctional phenol as well as inorganic filler in overlapping amounts with those of the instant application and where the composition is used in a semiconductor device and cured under substantially similar conditions . Claim FILLIN "Pluralize \“Claim\” if necessary, insert \“is\” or \“are\” as appropriate, and insert the claim number(s) which are under rejection." s 1-5, 8-9, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s FILLIN "Pluralize \“Claim\” if necessary, and insert the claim number(s) of the U.S. Patent." 1-3, 5-8, 11, and 13-19 of U.S. Patent No. FILLIN "Insert the number of the patent." 12,258,472 . Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent 12,258,472 requires the use of similar components, including the benzoxazine compound, a norbornane-containing epoxy, a curing agent which can be a polyfunctional phenol as well as inorganic filler in overlapping amounts with those of the instant application and where the composition is used in a semiconductor device and cured under substantially similar conditions . Claim FILLIN "Pluralize \“Claim\” if necessary, insert \“is\” or \“are\” as appropriate, and insert the claim number(s) which are under rejection." s 1-5, 8-9, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim FILLIN "Pluralize \“Claim\” if necessary, and insert the claim number(s) of the U.S. Patent." s 1-20 of U.S. Patent No. FILLIN "Insert the number of the patent." 12,441,833 . Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent 12,441,833 requires the use of similar components, including the benzoxazine compound, a norbornane-containing epoxy, a curing agent which can be a polyfunctional phenol as well as inorganic filler in overlapping amounts with those of the instant application and where the composition is used in a semiconductor device and cured under substantially similar conditions . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ADAM J BERRO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (703)756-1283 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:30-5 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Heidi Kelley can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-1831 . 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. /A.J.B./ Examiner, Art Unit 1765 /JOHN M COONEY/ Primary Examiner, Art Unit 1765