DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/22/2026. In particular, claim 1 has been amended to amended to recite the amount of modified polymer and the amount of nano-sized silicon dioxide. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Claim Rejections - 35 USC § 103
Claim(s) 11-19, 23, 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amano (US 6,140,454) in view of Komiyatani (US 6,447,915).
Amano teaches an example having 15.7 parts phenolic novolac type epoxy resin, 9.1 parts phenolic resin, 1.2 parts polycarbodiimide resin powder, 75 parts fused silica (Table 1) normalizes to 100 parts phenolic novolac type epoxy resin, 58 parts phenolic resin, 7.6 parts polycarbodiimide resin powder, 478 parts fused silica. These amounts meet claim 1. The ratio of carbodiimide to epoxy resin is 1.2 : 15.7, which is 0.07:1 which meets the range of claim 1.
Amano does not explicitly recite the presence of a modified polymer selected from polyethersulfone or polyamideimide.
However, Komiyatani teaches adhesives for circuit boards which contain an epoxy resin and a component (a) sulfur containing thermoplastic (abstract) where the component (a) includes polysulfone and polyethersulfone (col. 3, ln. 10-11). Komiyatani teaches the component (a) is present in 20-70 wt% of the total resin (col. 3, ln. 19-21) which falls within the ranges of claims 11 and 21 when the parts by weight are normalized to wt% of the total resin (giving about 7-70 wt% modified polymer).
It would have been obvious to use the polyethersulfones of Komiyatani because it has a high reactivity with epoxy resins and as a result suppresses the phase separation and gives improved heat resistance (col. 3, ln. 10-18).
Applicant provides calculations on pg. 13 of the Remarks filed on 4/22/2026 that the based on the amount of the resins in Amano and Komiyatani, Amano teaches the amount of polyethersulfone is 25-233 wt% based on the total mass of organic substances which overlaps the claimed range of 30-100 mass%.
Amano teaches the epoxy resin includes bisphenol A, bisphenol F and the like, naphthalene type epoxy resins, and the epoxy resins can be used in combination of two or more (col. 2, ln. 22-32) which meets the limitations of claim 12.
Amano teaches the phenolic resin includes cresol novolac resins (col. 2, ln. 36-40). As there are only three isomers of cresol (o-, m-, and p-), one of ordinary skill in the art would have instantly envisaged each isomer, including the claimed o-cresol. This meets claim 13.
Komiyatani teaches that component (a) (corresponding to the claimed modified polymer, polyethersulfone) has a molecular weight of 103 to 105 (col. 2, ln. 50-52) or 1000 to 100,000 which overlaps claim 14.
To the extent that claim 15 further limits an optional component (polyamide-imide), the Komiyatani meets claim 15.
The amount of silica in the example of Amano corresponds to about 75 wt% (Table 1) which falls in the range of claim 16 and Amano teaches the amount of inorganic filler can be 60-95 pbw of the tala weight of the composition (col. 4, ln. 10-15) which overlaps the range of claim 16.
Amano teaches using a curing accelerator in an amount of 0.3 pbm (Table 1) which falls in the range of claim 17.
Komiyatani teaches using the adhesive as a varnish using a solvent (col. 3, ln. 57-65; col. 5, ln. 27-34) and forming a film (col. 1, ln. 50) or coating (col. 5, ln. 27-34) which meets claims 18-19.
Amano teaches the composition is used in a circuit package composition (claim 3) and Komiyatani teaches the composition is used in a circuit board (abstract) which meets claim 27.
Amano and Komiyatani teach amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Amano and Komiyatani suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Amano and Komiyatani. See MPEP 2123.
Amano and Komiyatani do not explicitly recite the silica (silicon dioxide) is spherical with the particle size in the claimed range.
Du teaches a filler composition for printed circuit boards (¶ 2) where the spherical fillers are used (¶ 5). Du teaches the silica is 85-99 wt% silica with a D50 of 1-15 microns and a nano silica with a D50 of 10-100 nm (¶ 23). Du teaches a surface treatment of the silica (¶34-36). Applicant provides calculations on pg. 17 of the Remarks filed on 4/22/2026 that the amount of nanosilicon present is 0.87-34.62 wt% based on the total mass of organic substances which overlaps the claimed range of 1-10 mass%.
It would have been obvious to use a spherical silica because a spherical shape has lower viscosity and is easier to add (¶5). It would have been obvious to use a small amount of nano-silica because it allows it to adhere to the silica surface, forming a better ball-bearing effect and increasing the fluidity of the silica mixture, and the nano silica has a large surface area, which can adsorb resin or solvent onto the filler surface, thereby increasing the stability of the system (¶ 26).
Du teach amounts of nano-silicon which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Du suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Du. See MPEP 2123.
Response to Arguments
Applicant's arguments filed 4/22/2026 have been fully considered but they are not persuasive.
Applicant argues the claimed composition provides increased Tg and heat resistance, and improves the adhesive force among other properties. However, these properties are not present in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Amano teaches a different carbodiimide compound than claimed. This is not persuasive because the claim states “a carbodiimide compound” which is a genus that includes the polycarbodimides taught by Amano.
Applicant argues that Amano does not teach the claimed modified polymer, amount of modified polymer, silicon dioxide as claimed. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant agues that the underlying technical logic and roles of the claimed carbodiimide and polycarbodiimide of Amano are different and discusses the functions and reactivity. This is not persuasive because these features are not in the claims. Whether the compound acts as a reactive modifier or to protect modified polymers, the compound is present and meets the claimed limitation.
Applicant argues that the claimed mass ratio of carbodiimide to epoxy resin synergistically interacts with other components to improve the adhesion and peel strength while improving other properties. This is not persuasive because the prior art teaches an example that has a carbodiimide to epoxy ratio in the claimed range.
Applicant has not provided any structural distinction between the claimed carbodiimide compound and polycarbodiimides of the prior art.
Applicant argues that the prior art does not disclose the use of the specific amount of polyamide-imide resin. However, the claims present the polyamide-imide resin in the alternative to the polyethersulfone which is taught in Komiyatani.
Regarding the amount recited in the claim of 30-100% modified polymer per total of epoxy, carbodiimide, and phenolic resin, Applicant provides calculations on pg. 13 of the Remarks filed on 4/22/2026 that the based on the amount of the resins in Amano and Komiyatani, Amano teaches the amount of polyethersulfone is 25-233 wt% based on the total mass of organic substances which overlaps the claimed range of 30-100 mass%.
Applicant argues that the data provided by the instant specification, including Example 1 vs Examples 7 and 8 (for the effect of modified polymer), Example 1 vs comparative example 4 and Example 3 vs Example 6 for the criticality of the carbodiimide, and Example 1 vs Examples 9 and 10 for the criticality of silicon dioxide.
Allegations of unexpected results must comply with MPEP 716.02, including MPEP 716.02(d). The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In this case, there are numerous ranges of components recited in broad genuses. For example, claim 11 recites “an epoxy resin” “a carbodiimide compound” and “a phenolic resin”. The data provides examples of epoxy resins of ZX1059, NC3000, and ESN-375, which are not respresentative of the entire claimed genus. The data provides examples of epoxy resins of CARBODIIMIDE V-07, Stabaxol P2400, and CAERBODIIMIDE V-02B which are not representative of the entire claimed genus. Similar issues are present for the other components. As the data is not commensurate in scope with the claims, any allegations of unexpected results are not persuasive at this time.
Applicant argues that the amount of nano-silicon dioxide is 0-115.4 wt%. However, this overlaps the claimed range of 1-10 wt%. Applicant argues that the mount over 10% leade to inferior properties. However, the properties are not present in the claims and unexpected results has not been persuasively established, therefore Applicant’s arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (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 C BOYLE/Primary Examiner, Art Unit 1764
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