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 § 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 applicant regards as his invention.
Claim 7 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.
Regarding claim 7, in the first step of this method, it is noted that the coupling agent is added to a mixing step. However, in claim 1, the coupling agent is not mandatorily present (the amount of this component can be zero). Therefore, there is a slight contradiction between the method claim which positively recites the component and the compositional claim which does not. The examiner suggests amending the amount of the coupling agent in claim 1 to positively recite the coupling agent component.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 6, 8-9, 11, 13 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takada (US 2016/0244590).
Regarding claims 1-2, 4, 11 and 13, Takada teaches a modified resin composition prepared with the following raw materials (Table 1, Example 5):
As a matrix resin, two types of epoxy resin = 56 + 24 = 80
A phenoxy resin = 28.4
A nano silica (silicon dioxide) ([0101]) = 6
A curing agent (ion liquid) = 3
A curing accelerator = 1.5
A coupling agent = 1.2
This example reads on the claimed invention as the amounts of the ingredients are in relation to each other and do not have a basis based on the total weight of the composition. For example, when the parts by weight are normalized by a factor of 1.2, the following values arise:
As a matrix resin, two types of epoxy resin = 66.7
A phenoxy resin = 23.7
A nano silica (silicon dioxide) ([0101]) = 7.2
A curing agent (ion liquid) = 2.5
A curing accelerator = 1.25
A coupling agent = 1
Regarding claim 6, Takada teaches that the curing accelerator is an aromatic dimethylurea ([0108]) which is a tertiary amine ([0080]).
Regarding claim 8, Takada teaches a composite resin prepared from the raw materials of the modified resin composition of claim 1 (Examples).
Regarding claim 9, Takada teaches a prepreg comprising a reinforcement material (PET film) and a resin loaded on a surface of the reinforcement material wherein the resin is the composite resin of claim 8.
Regarding claim 20, Takada teaches that the coupling agent is a silane coupling agent ([0103]).
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.
Claim(s) 3, 12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590).
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claims 3 and 12, all the components in Takada Table 1, Example 5 are within the claimed range, except for the curing agent which, in the example is 2.5 parts by weight. However, in the specification, it teaches that when an ion liquid is used as the curing agent, the amount that can be used is 0.1 to 10 % by mass of the epoxy resin ([0076]). Therefore, using the amount of the epoxy resin as 66.7 parts as indicated by the example, the amount of the curing agent can be calculated to range from 0.0667 – 6.67 parts.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings within the specification of Takada to modify the amount of the curing agent in the Example of Takada. One would have been motivated to do so in order to receive the expected benefit of optimizing the curability with the resistance to moisture permeability (Takada, [0076]).
Regarding claim 16, Takada teaches in Example 5, the use of a bisphenol A type epoxy resin, however, which is not one of the recited epoxy resin.
Turning to the specification of Takada, one notes that alicyclic epoxy resin can be used as the epoxy resin as well ([0024]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to replace the bisphenol A epoxy resin of Example 5 of Takada with the alicyclic epoxy resin of paragraph [0024]) of Takada. One would have been motivated to do so because Takada teaches that they are equivalent epoxies` for use in the invention.
Claim(s) 5 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590) with evidence provided by Mitsubishi Chemical Group (jER epoxy resin)
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claim 5 and 14-15, Takada teaches the use of a phenoxy resin called YL7213B35 ([0102]) in the example. This has a biphenyl structure ([0056]) which does not read on the claimed structure.
However, turning to the specification of Takada, phenoxy resins having a bisphenol A skeleton ([0055]) which has a molecular weight of not less than 20,000 and not more than 800,000 ([0051]. As evidenced by Mitsubishi, a phenoxy resin having a bisphenol A skeleton has the recited structure (page 3) and given the range of molecular weight given by Takada, n would range from 50 to 2000. R1-R4 are all hydrogens and the halogen atom and the phosphorus containing groups are not mandatorily present.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the use of YL7213B35 in the example of Takada with another bisphenol A based phenoxy resin taught in the specification of Takada. One would have been motivated to do so in order to modified the coat ability of the resin as well as the flexibility ([0051]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590) in view of Yu, (Effect of Organosilane Coupling Agents on Microstructure and Properties of Nanosilica/Epoxy Composites, Polymer Composites 2012 pages 1516-1524).
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claim 7, please refer to the rejection of claim 1 for the compositional components of the method claim.
Takada teaches that the resin composition can be made by blending the components, along with a solvent to create the resin ([0082]).
However, it fails to teach that the first step is mixing the matrix resin, the nano silicon dioxide, the coupling agent, an organic solvent and heating the mixture to react and then using the resulting mixture is combined with the phenoxy resin, the curing agent and the curing accelerator.
Yu teaches an epoxy resin in which the silane coupling agent, the nanosilica particle, and the epoxy resin were combined first and heated and reacted (Materials and Preparation) and then the other curing components were added to the mixture.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to first combine the solvent with the epoxy resin, silane coupling agent and the nanosilica particle of Takada and heat it to react as noted by Yu and then further adding the other components to further cure the composition. One would have been motivated to do so in order to receive the expected benefit of improving the reinforcing and toughening effect on the epoxy matrix (Yu, Abstract).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590) in view of Oshima et al (US 2015/0337075)
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claim 9-10, Takada teaches that the resin composition can be in direct contact with a sealing target such as an organic EL element ([0093]), however fails to teaches that the resin can be a prepreg for a printed circuit board.
Oshima teaches an epoxy resin with a curing agent (Abstract). This can be made into a prepreg ([0038]) with a base material ([0038]) and then can be used in an organic EL device or on a printed-circuit board ([0051]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the resin composition of Takada as the prepreg and the printed circuit board application as noted by Oshima. One would have been motivated to do so by using a resin which has great moisture permeability, adhesive strength and transparency to a closely related application (Takada, Abstract).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590) with evidence provided by Fujioka et al (US 2005/0127319)
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claim 17, Takada teaches in Example 5, the use of curing accelerator of an aromatic dimethylurea, however, it is not one of the curing accelerators used.
Turning to the specification of Takada, one notes that imidazole curing accelerators such as Curezol 2 MS (2-methylimidazole, as evidenced by Fujioka ([0070]) can be used as the accelerator ([0080).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to replace the aromatic dimethyl urea of Example 5 of Takada with the 2-methylimidazole of paragraph [0080] of Takada. One would have been motivated to do so because Takada teaches that they are equivalent curing accelerators for use in the invention.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada (US 2016/0244590) in view of Tanaka et al (US 2006/0159929).
The discussion regarding Takada in paragraph 5 above is incorporated here by reference.
Regarding claim 18-19, Takada teaches in Example 5, the use of an ion liquid as the curing agent.
Turning to the specification of Takada, one notes that amine curing agents can also be used as a curing agent ([0066]) and that the curing agent is not particularly limited ([0065]).
Tanaka teaches an epoxy resin (Abstract) which uses an amine type curing agent, such as an aliphatic polyamine such as ethylenediamine, trimethylenediamine ([0065]), etc.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the aliphatic polyamine of Tanaka replace the ion liquid as taught by Takada. One would have been motivated to do so because the aliphatic polyamine of Tanaka is a conventional curing agent for epoxy resins. As Takada is open to the use of any curing agent, it would have been within the ordinary skill of a practitioner to use the common curing agent ethylene diamine to cure the epoxy resin of Takada. It would have been nothing more than using a known composition in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764