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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 8, 2026 has been entered.
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.
Claim(s) 1-3, 6-10, 12-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (JP 2014-210904, newly cited) and further in view of Narahashi (US 2010/0230382, newly cited).
Lee is directed to a composition (claimed molding resin composition) comprising an epoxy resin, a first inorganic filler having a low thermal expansion coefficient, such as calcium titanate, a second inorganic filler having a low dielectric loss rate, such as alumina, and a curing agent. Lee additionally states that a ratio between the first inorganic filler and the second inorganic filler ranges between 1/1.5 (approximately 0.67) and 1/0.5 (2). Given the general disclosure of Lee, one of ordinary skill in the art would have found it obvious to select the specific inorganic fillers identified above at a loading in accordance to the claimed invention (between 60% and 80% by volume). It is emphasized that Lee is seen to encompass volume percents in accordance to the claimed invention and Applicant has not provided a conclusive showing of unexpected results for the claimed combination of materials and loadings. For example, Comparative Example 4, when compared with Example 13, demonstrates a greater dielectric constant and a smaller dielectric loss tangent (these benefits are identified by Applicant as corresponding with the inventive concept- see paragraphs 7 and 111 in original disclosure). Additionally, Comparative Example 1 is seen to demonstrate substantially the same properties as Inventive Example 5. Thus, Applicant has not provided a conclusive showing of unexpected results for the claimed composition.
Lastly, regarding claim 1 (and claim 12), Lee discloses an active ester curing agent (1st material). Narahashi is further provided to evidence the conventional makeup of common active ester compounds used to cure epoxy resins (Paragraph 115 and 117). One of ordinary skill in the art would have found it obvious to use an active ester compound in accordance to the claimed invention given the broad disclosure of Lee to include an active ester curing agent and the recognized makeup of said agents.
Regarding claims 5 and 6, given that the epoxy based composition of Lee can include silica and calcium titanate at loadings in accordance to the claimed invention, it reasons that the relative dielectric constant of the total amount of inorganic filler (silica and calcium titanate) in Lee would mimic that required by the claimed invention.
With respect to claim 7, the inorganic filler in Lee has a total loading or amount between 50% and 80% (claimed volume percent would be expected to result from such a mass percent).
As to claims 8 and 9, the claim is directed to a molding resin composition and limitations pertaining to the intended use of such a composition fail to further define the makeup of the claimed composition.
Regarding claim 10, Lee refers to a prepreg of a printed circuit board used in an electronic device.
With respect to claim 13, the claimed range of ester equivalents is consistent with conventional active ester compounds, as shown for example by Narahashi (Paragraph 207).
Regarding claim 14, Narahashi recognizes the conventional use of equivalent ratios in accordance to the claimed invention (Paragraph 119).
As to claim 17, Lee states that an epoxy resin is “preferably” included at mass loadings between 20% and 30%. It is well taken that a reference may be relied upon for all that it would reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. As such, one of ordinary skill in the art would have found it obvious to form compositions with epoxy mass loadings as low as 13% (non-preferred mass loadings are less than 20% and greater than 30%) and Applicant has not provided a conclusive showing of unexpected results for the claimed mass loadings (lack of comparative examples with epoxy loadings outside that required by the claimed invention).
5. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and
Narahashi and further in view of Kang (US 2008/074334, of record).
As detailed above, Lee is directed to a printed circuit board application including an epoxy based composition comprising a combination of inorganic fillers. In such an instance, though, Lee fails to specifically describe the inclusion of an antenna. In any event, printed circuit boards are commonly formed with antenna portions, as shown for example by Kang (Paragraph 45). One of ordinary skill in the art would have found it obvious to include an antenna in the printed circuit board of Lee (consistent with the known makeup of printed circuit boards).
6. Claim(s) 1-3, 6-10, 12, 14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and further in view of Takaya (US 2008/0044660, newly cited).
Lee is directed to a composition (claimed molding resin composition) comprising an epoxy resin, a first inorganic filler having a low thermal expansion coefficient, such as calcium titanate, a second inorganic filler having a low dielectric loss rate, such as alumina, and a curing agent. Lee additionally states that a ratio between the first inorganic filler and the second inorganic filler ranges between 1/1.5 (approximately 0.67) and 1/0.5 (2). Given the general disclosure of Lee, one of ordinary skill in the art would have found it obvious to select the specific inorganic fillers identified above at a loading in accordance to the claimed invention (between 60% and 80% by volume). It is emphasized that Lee is seen to encompass volume percents in accordance to the claimed invention and Applicant has not provided a conclusive showing of unexpected results for the claimed combination of materials and loadings. For example, Comparative Example 4, when compared with Example 13, demonstrates a greater dielectric constant and a smaller dielectric loss tangent (these benefits are identified by Applicant as corresponding with the inventive concept- see paragraphs 7 and 111 in original disclosure).
Lastly, regarding claim 1 (and claims 1, 12, and 14), Lee discloses an active ester curing agent (1st material listed under “preferred components” on top of page 3 of the prior art document sent on December 11, 2025). Takaya is further provided to evidence the conventional makeup of common active ester compounds used to cure epoxy resins (Paragraphs 176 and 177). One of ordinary skill in the art would have found it obvious to use an active ester compound in accordance to the claimed invention given the broad disclosure of Lee to include an active ester curing agent and the recognized makeup of said agents.
Regarding claims 5 and 6, given that the epoxy based composition of Lee can include silica and calcium titanate at loadings in accordance to the claimed invention, it reasons that the relative dielectric constant of the total amount of inorganic filler (silica and calcium titanate) in Lee would mimic that required by the claimed invention.
With respect to claim 7, the inorganic filler in Lee has a total loading or amount between
50% and 80% (claimed volume percent would be expected to result from such a mass percent).
As to claims 8 and 9, the claim is directed to a molding resin composition and limitations pertaining to the intended use of such a composition fail to further define the makeup of the claimed composition.
Regarding claim 10, Lee refers to a prepreg of a printed circuit board used in an electronic device.
With respect to claim 14, the claimed range of equivalent ratios is consistent with conventional active ester compounds, as shown for example by Takaya (Paragraph 177).
As to claim 17, Lee states that an epoxy resin is “preferably” included at mass loadings between 20% and 30%. It is well taken that a reference may be relied upon for all that it would reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. As such, one of ordinary skill in the art would have found it obvious to form compositions with epoxy mass loadings as low as 13% (non-preferred mass loadings are less than 20% and greater than 30%) and Applicant has not provided a conclusive showing of unexpected results for the claimed mass loadings (lack of comparative examples with epoxy loadings outside that required by the claimed invention).
7. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Takaya as applied in claim 1 above and further in view of Kang (US 2008/074334, of record).
As detailed above, Lee is directed to a printed circuit board application including an epoxy based composition comprising a combination of inorganic fillers. In such an instance, though, Lee fails to specifically describe the inclusion of an antenna. In any event, printed circuit boards are commonly formed with antenna portions, as shown for example by Kang (Paragraph 45). One of ordinary skill in the art would have found it obvious to include an antenna in the printed circuit board of Lee (consistent with the known makeup of printed circuit boards).
8. Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over either one of (a1) Lee and Narahashi or (a2) Lee and Takaya and further in view of (b) Hayashi (US 6,143,116, newly cited).
As detailed above, Lee is directed to an insulating composition comprising a plurality of inorganic fillers, such as calcium titanate and alumina. With specific respect to the calcium titanate, the claimed diameters are consisting with those that are conventionally used in similar insulating compositions, as shown for example by Hayashi (Column 5, Lines 10-25). One of ordinary skill in the art would have found it obvious to use conventional diameters for the calcium titanate of Lee absent a conclusive showing of unexpected results (lack of comparative examples having non-inventive diameters).
9. Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over either one of (a1) Lee and Narahashi or (a2) Lee and Takaya and further in view of (b) Nagatani (US 2007/0207337, newly cited).
As detailed above, Lee is directed to an insulating composition comprising a plurality of inorganic fillers, such as calcium titanate and alumina. With specific respect to the calcium titanate, both non-calcined and calcined versions are conventionally used in similar insulating compositions, as shown for example by Nagatani (Paragraph 70). One of ordinary skill in the art would have found it obvious to use conventional versions of calcium titanate, including non-calcined calcium titanate, in the composition of Lee absent a conclusive showing of unexpected results (lack of comparative examples having calcined calcium titanate). It is emphasized that Nagatani recognizes that the use of non-calcined or calcined calcium titanate (both are recognized as providing suitable insulating compositions).
10. Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Narahashi as applied in claim 1 above and further in view of Hayashi and Nagatani.
As detailed above, Lee is directed to an insulating composition comprising a plurality of inorganic fillers, such as calcium titanate and alumina. With specific respect to the calcium titanate, the claimed diameters are consisting with those that are conventionally used in similar insulating compositions, as shown for example by Hayashi (Column 5, Lines 10-25). One of ordinary skill in the art would have found it obvious to use conventional diameters for the calcium titanate of Lee absent a conclusive showing of unexpected results (lack of comparative examples having non-inventive diameters).
Additionally, as detailed above, Lee is directed to an insulating composition comprising a plurality of inorganic fillers, such as calcium titanate and alumina. With specific respect to the calcium titanate, both non-calcined and calcined versions are conventionally used in similar insulating compositions, as shown for example by Nagatani (Paragraph 70). One of ordinary skill in the art would have found it obvious to use conventional versions of calcium titanate, including non-calcined calcium titanate, in the composition of Lee absent a conclusive showing of unexpected results (lack of comparative examples having calcined calcium titanate). It is emphasized that Nagatani recognizes that the use of non-calcined or calcined calcium titanate (both are recognized as providing suitable insulating compositions).
Response to Arguments
11. Applicant’s arguments with respect to claim(s) 1-3 and 6-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Example 13 achieves a lower dielectric loss tangent while maintaining a high relative dielectric constant in the cured product after molding when using an active ester compound, as opposed to a phenol-based curing agent. It is emphasized, though, that Lee (same family as KR document used in previous rejection- Jeon) is specifically directed to insulating compositions including an active ester curing agent. The fact that an exemplary embodiment does not contain an active ester curing agent fails to render the claimed composition non-obvious. Again, Lee only discloses 7 types of curing agents and as such, each is seen to be expressly disclosed by Lee. Essentially, Lee would anticipate a claim simply requiring an epoxy resin and an active ester curing agent. As such, a comparison between Examples 13 and 14 is not seen to provide a conclusive showing of unexpected results for an active ester agent, as compared with a phenol curing agent (since Lee is seen to expressly teach a composition including an active ester compound).
Applicant further contends that the specific combination of a first inorganic filler (calcium titanate) and a second inorganic filler (alumina or silica) is not disclosed by Lee. As detailed in the rejection above, Lee is directed to a composition comprising a first inorganic filler having a low thermal expansion coefficient, such as calcium titanate, and a second inorganic filler having a low dielectric loss rate, such as alumina. It is further noted that Lee is specifically directed to an insulating composition having a small dielectric loss tangent, with values as small as 0.003 in the exemplary compositions (Example 2 in Table 3). These values are smaller than any of those disclosed by Applicant as corresponding with inventive compositions (see Tables in original specification). The specific combination of fillers required by the claims would have been obvious in view of the disclosure of Lee noted above and Applicant has not provided a conclusive showing of unexpected results for the claimed combination of inorganic fillers.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 July 14, 2026
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