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 .
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2017/0342264; IDS, 09/11/2023) in view of Hiroharu (WO2004/067638; IDS, 09/11/2023).
Jung is directed to a thermosetting resin which may be used in a prepreg, function laminated sheet and a copper-foil laminate. Jung discloses the thermosetting resin composition according to the present disclosure is a non-epoxy-based thermosetting resin composition, and includes: (a) a poly(phenylene ether) having two or more unsaturated substituent groups selected from the group consisting of a vinyl group and an allyl group at both ends of the molecular chain thereof, or an oligomer of the poly(phenylene ether); (b) three or more cross-linking curing agents; and (c) a flame retardant. (Para, 0023). Jung discloses the thermosetting resin composition may further include an inorganic filler surface-treated with a vinyl group-containing silane coupling agent. (Para, 0023). Jung discloses examples of the inorganic fill include silicas, such as natural silica, fused silica, amorphous silica, and crystalline silica, boehmite, alumina, talc, spherical glass, calcium carbonate, magnesium carbonate, magnesia, clay, calcium silicate, titanium oxide, antimony oxide, glass fiber, aluminum borate, barium titanate, strontium titanate, calcium titanate, magnesium titanate, bismuth titanate, titanium oxide, barium zirconate, calcium zirconate, boron nitride, silicon nitride, talc, mica, and the like, and the surface thereof is treated with a vinyl group-containing silane coupling agent. (Para, 0068). Jung discloses the inorganic fillers may be used either alone or in mixture of two or more thereof and preferably fused silica exhibiting a low coefficient of thermal expansion is preferred. (Para, 0068). Jung discloses the size of the inorganic filler (d) is not particularly limited, but is advantageous in terms of dispersibility when the average particle diameter is in a range of about 0.5 to 5 μm. (Para, 0070). Jung discloses the content of the inorganic filler is not particularly limited, and may be appropriately adjusted in consideration of the aforementioned warpage characteristics, mechanical properties, and the like. (Para, 0071). Jung discloses the content of the inorganic filler is preferably in a range of about 10 to 50 wt % based on the total weight of the thermosetting resin composition. (Para, 0071).These disclosures teach and/or suggest the limitation of claim 1, ‘ A resin composition for a solder resist comprising a thermosetting resin, an inorganic filler…’
Jung discloses additionally the thermosetting resin composition of the present disclosure may additionally include a flame retardant generally known in the art, various polymers such as other thermosetting resins or thermoplastic resins, which are not described above, and oligomers thereof, other additives such as solid rubber particles or an ultraviolet absorber, an antioxidant, a polymerization initiator, a dye, a pigment, a dispersing agent, a thickener, and a leveling agent, and the like, if necessary, without impairing inherent characteristics of the resin composition. (Para, 0080). Jung discloses examples that include: an organic filler such as a silicone-based powder, a nylon powder, and a fluorine resin powder, and a thickener such as ORBEN and BENTON; a polymer-based antifoaming agent such as silicone-based and fluorine resin-based antifoaming agents or a leveling agent; an adhesion imparting agent such as imidazole-based, thiazole-based, triazole-based, and silane-based coupling agents; a coloring agent such as phthalocyanine and carbon black, and the like. (Para, 0080).
Jung discloses the thermosetting resin composition may include: (a) about 20 to 50 parts by weight of a poly(phenylene ether) resin having two or more unsaturated substituent groups at both ends of the molecular chain thereof; (b) about 5 to 45 parts by weight of three or more cross-linking curing agents; and (c) about 10 to 30 parts by weight of a flame retardant, based on 100 parts by weight of the composition, and may satisfy the total 100 parts by weight by further including other organic solvents or other components. (Para, 0083). Jung discloses another example of the present disclosure, the thermosetting resin composition may include: (a) about 20 to 50 parts by weight of a poly(phenylene ether) resin having two or more unsaturated substituent groups at both ends of the molecular chain thereof; (b) about 5 to 45 parts by weight of three or more cross-linking curing agents; (c) about 10 to 30 parts by weight of a flame retardant; and (d) about 10 to 50 parts by weight of an inorganic filler surface-treated with a vinyl group-containing silane coupling agent, based on 100 parts by weight of the composition, and may satisfy the total 100 parts by weight by further including other organic solvents or other components. (Para, 0084).
Jung then discloses a laminated sheet according to the present disclosure includes: a metal foil or a polymer film substrate; and a resin layer which is formed on one surface or both surfaces of the substrate and cured by the thermosetting resin composition. (Para, 0103). Jung discloses an example thereof includes a resin-attached copper foil including: a metal foil; and a resin layer which is formed on one surface or both surfaces of the metal foil and cured by the thermosetting resin composition. (Para, 0104). Jung discloses as the metal foil, a metal foil composed of a typical metal or alloy known in the art may be used without limitation. (Para, 0105). Jung explains, when the metal foil is a copper foil, a laminate formed by coating and drying the thermosetting resin composition according to the present disclosure may be used as a copper foil laminate and preferably it is a copper foil. (Para, 0105). These disclosures teach and/or suggest the limitation of claim 2.
Jung also discloses a printed circuit board laminated and molded by including one or more selected from the group consisting of the prepreg, an insulating resin sheet, and a resin-attached copper foil, preferably a multi-layer printed circuit board. (Para, 0114). Jung discloses the printed circuit board refers to a printed circuit board in which one or more layers are laminated by a plated through-hole method or a build-up method, and the like, and the printed circuit board may be obtained by superimposing and aligning the aforementioned prepreg or an insulating resin sheet with an inner layer wiring board, and heating, pressurizing, and molding the resulting product. (Para, 0015). Jung discloses the printed circuit board may be prepared by a typical method known in the art such as by laminating a copper foil on one surface or both surfaces of the prepreg according to the present disclosure and heating and pressurizing the resulting product to prepare a copper foil laminate, perforating holes in the copper foil laminate to perform a through hole plating, and then subjecting a copper foil including a plated film to etching treatment to form a circuit. (Para, 0116). Jung discloses the prepreg and the printed circuit board may be prepared from the thermosetting resin composition according to the present disclosure. It could be seen that the prepreg and the printed circuit board had a low permittivity and a low dielectric loss as well as a low coefficient of thermal expansion (CTE), a high glass transition temperature (Tg), and excellent heat resistance and the prepreg and the printed circuit board of the present disclosure may be usefully utilized for parts of a printed circuit board for a network used in various electric and electronic device. (Para, 0117). These disclosures teach and/or suggest the limitation of claim 3.
Still, the disclosures of Jung as discussed above fail to teach and/or suggest the limitiaotn of claim 1, ‘ A resin composition for a solder resist comprising …and hollow resin particles, wherein the hollow resin particles are contained in the resin composition for a solder resist in an amount of 1% by weight to 50% by weight with respect to the total solid content of the resin composition for a solder resist.’ However, the disclosures of Jung in view of Hiroharu provide such teachings.
Hiroharu is directed to a resin composition containing hollow particles and a prepreg containing such composition and a laminated sheet made therefrom. Hiroharu discloses the resin composition enables the stable production of a laminated sheet that has a low dielectric constant, low dielectric loss tangent, and low thermal expansion coefficient. (Abstract). Hiroharu discloses the resin composition contains a thermosetting resin and hollow particles. (Abstract). Hiroharu discloses the shells of the hollow particles have a single layer structure composed of a polymer or copolymer of a crosslinking monomer, or a copolymer of a crosslinking monomer and a monofunctional monomer and the hollow particles have an average particle diameter of 0.1-30 mum and a shell thickness of 0.01-4 mum. (Abstract). Hiroharu discloses the resin composition according to the present invention contains a thermosetting resin and hollow particles and the disclosed resin composition, the volume ratio of the hollow particles in the resin composition is 40% by volume or less. (Page 2-12). The disclosures of Jung as discussed above in view of these disclosures of Hiroharu teach and/or suggest the limitation of claim 1, ‘ A resin composition for a solder resist comprising …and hollow resin particles, wherein the hollow resin particles are contained in the resin composition for a solder resist in an amount of 1% by weight to 50% by weight with respect to the total solid content of the resin composition for a solder resist.’
It would have been obvious to one of ordinary skill in the art at the time of filing of the present application by Applicant to modify the disclosures of Jung in view of the disclosures of Hiroharu because both are directed to analogous thermosetting resin compositions used for electronic devices such as printed circuit boards and adding the hollow resin particles as disclosed in Hiroharu to the resin composition of Jung will form a laminate for a printed wiring board having a lower the dielectric constant which in turns means that a laminate having a dielectric loss tangent can be obtained.
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.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 7 of copending Application No. 18/266,629 (US PGPUB 2024/0055308). Although the claims at issue are not identical, they are not patentably distinct from each other because both the recitations of claims 1-3 of the present application and the recitations of claims 1, 3 and 7 of copending US Patent Application 18/266,629 are directed to analogous resin compositions, analogous films made from the resin composition and analogous semiconductor devices which incorporate films made from the resin composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/CALEEN O SULLIVAN/Primary Examiner, Art Unit 2899