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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 January 2026 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, and 6-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019-178310 A with a machine translation (filed 11 June 2025) (hereinafter “Kawabe”) being used as the English language equivalent translation, and further in view of United States Patent Application Publication No. US 2019/0110364 (hereinafter “Yoneda”).Regarding claim 1 Kawabe teaches a curable resin composition comprising a polyfunctional vinyl aromatic copolymer containing a repeating unit derived from a divinyl aromatic compound and a repeating unit derived from a monovinyl aromatic compound, a crosslinking agent (curing agent), etc. (abstract). Kawabe teaches by blending the resin composition with an inorganic high dielectric powder (high dielectric constant filler (C)) such as barium titanate (titanate compound filler (C1)), a cured product made from the resin composition is excellent as a material for electronic parts, especially as a high frequency electronic parts material (paragraph bridging pages 17-18, and 1st full paragraph on page 21). In addition, Kawabe teaches the resin composition includes fillers, including silica, which improves heat resistance, flame retardancy, and dimensional stability to the cured product of the resin composition (paragraph bridging pages 17-18). Kawabe does not explicitly teach a content ratio of the inorganic high dielectric powder (high dielectric constant filler (C)) to the silica filler is 10:90 to 90:10 as a mass ratio. It would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate content for each of: (i) the inorganic high dielectric powder (high dielectric constant filler); and (ii) the silica filler, and their relative mass ratios using nothing more than routine experimentation in order to achieve a desired balance between: (1) heat resistance, flame retardancy, and dimensional stability of the cured product; and (2) dielectric property to make the cured product an excellent material for electronic parts. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B). Kawabe does not explicitly teach the inorganic high dielectric powder (high dielectric constant filler (C) comprising a titanate compound filler (C1)) includes one of strontium titanate particles and calcium titanate particles. Yoneda teaches a multilayered circuit board (abstract and paragraph [0022]). Yoneda teaches the use of high dielectric particles include particles comprising barium titanate, strontium titanate, calcium titanate, etc. (paragraph [0031]). Yoneda establishes a functional equivalence between barium titanate and one of strontium titanate and calcium titanate for use as high dielectric particles in electronic parts. It would have been obvious for a person having ordinary skill in the art at the time of the invention to form the inorganic high dielectric powder of Kawabe, and substituting the material of the inorganic high dielectric powder, such as barium titanate, of Kawabe with one of strontium titanate and calcium titanate, as suggested by Yoneda, motivated by the desire to form a conventional inorganic high dielectric powder for electronic parts, comprising one of strontium titanate and calcium titanate known in the art as being functionally equivalent and predictably suitable for use in forming such an inorganic high dielectric powder.Regarding claim 4 In addition, Kawabe teaches chain transfer agents and crosslinking agents (curing agents) include triallyl isocyanurate (TAIC) (an allyl compound), polyfunctional methacrylate compounds, polyfunctional acrylate compounds, an acenaphthylene compound, polybutadiene, a polyfunctional vinyl compound, a divinylbenzene (vinyl hydrocarbon-based) compound, a maleimide compound, etc. (full paragraph on page 12, paragraph bridging pages 13-14, and paragraph bridging pages 15-16).Regarding claim 6 In addition, Kawabe teaches the fillers may be surface treated with a silane coupling agent (paragraph bridging pages 17-18).Regarding claim 7 In addition, Kawabe teaches by blending the resin composition with an inorganic high dielectric powder (such as the strontium titanate and/or calcium titanate from the combination of Kawabe and Yoneda) (high dielectric constant filler), a cured product made from the resin composition is excellent as a material for electronic parts (paragraph bridging pages 17-18, and 1st full paragraph on page 21). The combination of Kawabe and Yoneda does not explicitly teach a content of the strontium titanate and/or calcium titanate (high dielectric constant filler) is 20 to 300 parts by mass with respect to 100 parts by mass of a sum of the polyfunctional vinyl aromatic copolymer and the curing agent. It would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate content for the inorganic high dielectric powder (such as the strontium titanate and/or calcium titanate from the combination of Kawabe and Yoneda) (high dielectric constant filler) with respect to a content of the polyfunctional vinyl aromatic copolymer and the curing agent using nothing more than routine experimentation in order to achieve the desired dielectric property to make the cured product an excellent material for electronic parts. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B).Regarding claim 8 Regarding the relative dielectric constant of a cured product of the resin composition, although the prior art does not explicitly disclose a cured product of the resin composition has a relative dielectric constant of 3.5 to 7 at a frequency of 10 GHz and a dielectric loss tangent of 0.01 or less at a frequency of 10 GHz, the claimed properties are deemed to naturally flow from the structure in the prior art since the combination of Kawabe and Yoneda teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.Regarding claim 9 In addition, Kawabe teaches the curable resin composition comprising the polyfunctional vinyl aromatic copolymer can be used as an insulating layer in a multilayer printed (wiring) board (1st full paragraph on page 25). Claim 9 recites the intended use for the resin composition , i.e. the resin composition as in claim 1 is used to form an insulating layer included between wiring layers in a wiring board including 10 or more wiring layers. It is submitted that, according to MPEP § 2111.02, intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner's position that the structure of the resin composition of Kawabe is capable of performing the intended use as recited in the claim.Regarding claim 10 In addition, Kawabe teaches the curable resin composition is used to impregnate a fibrous base material for forming a prepreg (paragraph bridging pages 19-20).Regarding claims 11 and 12 Regarding the relative dielectric constant of a cured product of the prepreg, resin composition, and the fibrous base material, although the prior art does not explicitly disclose: a relative dielectric constant of a cured product of the prepreg is 3.5 to 7 at a frequency of 10 GHz, and a difference between a relative dielectric constant of a cured product of the resin composition at a frequency of 10 GHz and a relative dielectric constant of the fibrous base material at a frequency of 10 GHz is 0 to 0.3; or a relative dielectric constant of the fibrous base material is 3.5 to 7 at a frequency of 10 GHz, the claimed properties are deemed to naturally flow from the structure in the prior art since the combination of Kawabe and Yoneda teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.Regarding claim 13 In addition, Kawabe teaches the cured product obtained by curing the curable resin composition can be used as a laminate, an adhesive, a coating film, a film, for example, for semiconductor sealing materials and electronic circuit formation (page 34), which corresponds to a film with resin comprising a resin layer and a support film.Regarding claim 14 In addition, Kawabe teaches the curable resin composition can be adhered onto a metal foil (abstract).Regarding claims 15 and 17 In addition, Kawabe teaches the curable resin composition can be an insulating layer including the prepreg and used in a copper clad laminate (cured product) (abstract, 1st two paragraphs on page 25, and 2nd full paragraph on page 31), which corresponds to a metal-clad laminate comprising a metal foil.Regarding claims 16 and 18 In addition, Kawabe teaches the curable resin composition can be an insulating layer including the prepreg and used in a printed wiring board (cured product) (abstract, and paragraph bridging pages 19-20), which corresponds to a wiring board comprising wiring.
Claims 1, 2, 4, and 6-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabe, and further in view of United States Patent Application Publication No. US 2015/0034366 (hereinafter “Yoshioka”). Regarding claims 1 and 19 Kawabe teaches a curable resin composition comprising a polyfunctional vinyl aromatic copolymer containing a repeating unit derived from a divinyl aromatic compound and a repeating unit derived from a monovinyl aromatic compound, a crosslinking agent (curing agent), etc. (abstract). Kawabe teaches by blending the resin composition with an inorganic high dielectric powder (high dielectric constant filler (C)) such as barium titanate, a cured product made from the resin composition is excellent as a material for electronic parts (paragraph bridging pages 17-18, and 1st full paragraph on page 21). In addition, Kawabe teaches the resin composition includes fillers, including silica, which improves heat resistance, flame retardancy, and dimensional stability to the cured product of the resin composition (paragraph bridging pages 17-18). Kawabe does not explicitly teach a content ratio of the inorganic high dielectric powder (high dielectric constant filler (C)) to the silica filler is 10:90 to 90:10 as a mass ratio. It would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate content for each of: (i) the inorganic high dielectric powder (high dielectric constant filler); and (ii) the silica filler, and their relative mass ratios using nothing more than routine experimentation in order to achieve a desired balance between: (1) heat resistance, flame retardancy, and dimensional stability of the cured product; and (2) dielectric property to make the cured product an excellent material for electronic parts. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B). Kawabe also teaches the curable resin composition can be an insulating layer and used in a copper clad laminate (abstract, 1st two paragraphs on page 25, and 2nd full paragraph on page 31). Kawabe does not specifically teach that the inorganic high dielectric powder (high dielectric constant filler (C)) includes a magnesium oxide filler (C2). Yoshioka teaches a circuit board comprising an insulating base substrate and a circuit layer (abstract). Yoshioka teaches the circuit board forms an electric circuit on an insulating base substrate of a metal foil-clad laminate (paragraph [0146]). Yoshioka teaches the insulating base substrate may contain a filler, where the filler is not particularly limited and may be inorganic fine particles (paragraph [0076]). Yoshioka teaches the inorganic fine particles include high dielectric fillers (high dielectric constant filler (C)) such as magnesium oxide, silica, barium titanate, etc. (paragraph [0077]). Yoshioka establishes a functional equivalence between the inorganic high dielectric powder (high dielectric constant filler (C)), including barium titanate and magnesium oxide for use as an inorganic high dielectric particle in electronic parts, such as a metal-foil clad laminate. It would have been obvious for a person having ordinary skill in the art at the time of the invention to form the inorganic high dielectric powder from Kawabe, and substituting the inorganic high dielectric powder, such as barium titanate, with magnesium oxide, as suggested by Yoshioka, motivated by the desire to form a conventional inorganic high dielectric powder for electronic parts, comprising magnesium oxide known in the art as being functionally equivalent and predictably suitable for use in forming such an inorganic high dielectric powder in an insulating layer of a metal-foil clad laminate. Regarding claim 2 In addition, the claimed titanate compound filler (C1) is recited as an optional element in claim 1. Therefore, limitations further specifying said titanate compound filler (C1) are also considered optional and are not needed to meet at least claim 2.Regarding claim 4 In addition, Kawabe teaches chain transfer agents and crosslinking agents (curing agents) include triallyl isocyanurate (TAIC) (an allyl compound), polyfunctional methacrylate compounds, polyfunctional acrylate compounds, an acenaphthylene compound, polybutadiene, a polyfunctional vinyl compound, a divinylbenzene (vinyl hydrocarbon-based) compound, a maleimide compound, etc. (full paragraph on page 12, paragraph bridging pages 13-14, and paragraph bridging pages 15-16).Regarding claim 6 In addition, Kawabe teaches the fillers may be surface treated with a silane coupling agent (paragraph bridging pages 17-18).Regarding claim 7 In addition, Kawabe teaches by blending the resin composition with an inorganic high dielectric powder (such as the magnesium oxide from the combination of Kawabe and Yoshioka) (high dielectric constant filler), a cured product made from the resin composition is excellent as a material for electronic parts (paragraph bridging pages 17-18, and 1st full paragraph on page 21). The combination of Kawabe and Yoshioka does not explicitly teach a content of the magnesium oxide (high dielectric constant filler) is 20 to 300 parts by mass with respect to 100 parts by mass of a sum of the polyfunctional vinyl aromatic copolymer and the curing agent. It would have been obvious to one having ordinary skill in the art at the time of the invention to determine an appropriate content for the inorganic high dielectric powder (such as the magnesium oxide from the combination of Kawabe and Yoshioka) (high dielectric constant filler) with respect to a content of the polyfunctional vinyl aromatic copolymer and the curing agent using nothing more than routine experimentation in order to achieve the desired dielectric property to make the cured product an excellent material for electronic parts. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B).Regarding claim 8 Regarding the relative dielectric constant of a cured product of the resin composition, although the prior art does not explicitly disclose a cured product of the resin composition has a relative dielectric constant of 3.5 to 7 at a frequency of 10 GHz and a dielectric loss tangent of 0.01 or less at a frequency of 10 GHz, the claimed properties are deemed to naturally flow from the structure in the prior art since the combination of Kawabe and Yoshioka teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.Regarding claim 9 In addition, Kawabe teaches the curable resin composition comprising the polyfunctional vinyl aromatic copolymer can be used as an insulating layer in a multilayer printed (wiring) board (1st full paragraph on page 25). Claim 9 recites the intended use for the resin composition , i.e. the resin composition as in claim 1 is used to form an insulating layer included between wiring layers in a wiring board including 10 or more wiring layers. It is submitted that, according to MPEP § 2111.02, intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner's position that the structure of the resin composition of Kawabe is capable of performing the intended use as recited in the claim.Regarding claim 10 In addition, Kawabe teaches the curable resin composition is used to impregnate a fibrous base material for forming a prepreg (paragraph bridging pages 19-20).Regarding claims 11 and 12 Regarding the relative dielectric constant of a cured product of the prepreg, resin composition, and the fibrous base material, although the prior art does not explicitly disclose: a relative dielectric constant of a cured product of the prepreg is 3.5 to 7 at a frequency of 10 GHz, and a difference between a relative dielectric constant of a cured product of the resin composition at a frequency of 10 GHz and a relative dielectric constant of the fibrous base material at a frequency of 10 GHz is 0 to 0.3; or a relative dielectric constant of the fibrous base material is 3.5 to 7 at a frequency of 10 GHz, the claimed properties are deemed to naturally flow from the structure in the prior art since the combination of Kawabe and Yoshioka teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112.Regarding claim 13 In addition, Kawabe teaches the cured product obtained by curing the curable resin composition can be used as a laminate, an adhesive, a coating film, a film, for example, for semiconductor sealing materials and electronic circuit formation (page 34), which corresponds to a film with resin comprising a resin layer and a support film.Regarding claim 14 In addition, Kawabe teaches the curable resin composition can be adhered onto a metal foil (abstract).Regarding claims 15 and 17 In addition, Kawabe teaches the curable resin composition can be an insulating layer including the prepreg and used in a copper clad laminate (cured product) (abstract, 1st two paragraphs on page 25, and 2nd full paragraph on page 31), which corresponds to a metal-clad laminate comprising a metal foil.Regarding claims 16 and 18 In addition, Kawabe teaches the curable resin composition can be an insulating layer including the prepreg and used in a printed wiring board (cured product) (abstract, and paragraph bridging pages 19-20), which corresponds to a wiring board comprising wiring.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kawabe and Yoneda, as applied to claim 1, as further evidenced by an article titled “Strontium Titanate” by ESPImetals.com (hereinafter “ESPI”).Regarding claim 2 The limitations for claim 1 have been set forth above. As previously mentioned, the combination of Kawabe and Yoneda teaches the high dielectric particles includes particles comprising barium titanate, strontium titanate, calcium titanate, etc. (Yoneda – paragraph [0031]). The relative dielectric constant of strontium titanate (the titanate compound filler (C1)) is 300, as evidenced by ESPI (page 1), which falls within the claimed range.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kawabe and Yoneda as applied to claim 1 above, and further in view of Yoshioka.Regarding claim 19 The limitations for claim 1 have been set forth above. As previously mentioned, Kawabe teaches blending the resin composition with an inorganic high dielectric powder such as barium titanate, a cured product made from the resin composition is excellent as a material for electronic parts (page 21, 1st full paragraph). Kawabe also teaches the curable resin composition can be an insulating layer and used in a copper clad laminate (abstract, 1st two paragraphs on page 25, and 2nd full paragraph on page 31). Kawabe does not explicitly teach the inorganic high dielectric powder (high dielectric constant filler (C)) includes a magnesium oxide filler (C2). Yoshioka teaches a circuit board comprising an insulating base substrate and a circuit layer (abstract). Yoshioka teaches the circuit board forms an electric circuit on an insulating base substrate of a metal foil-clad laminate (paragraph [0146]). Yoshioka teaches the insulating base substrate may contain a filler, where the filler is not particularly limited and may be inorganic fine particles (paragraph [0076]). Yoshioka teaches the inorganic fine particles include high dielectric fillers (high dielectric constant filler (C)) such as magnesium oxide, silica, barium titanate, etc. (paragraph [0077]). Yoshioka establishes a functional equivalence between barium titanate and magnesium oxide for use as an inorganic high dielectric particle in electronic parts, such as a metal-foil clad laminate. It would have been obvious for a person having ordinary skill in the art at the time of the invention to form the inorganic high dielectric powder from the combination of Kawabe and Yoneda, and combining said inorganic high dielectric powder with magnesium oxide, as suggested by Yoshioka, motivated by the desire to form a conventional inorganic high dielectric powder for electronic parts, comprising magnesium oxide known in the art as being functionally equivalent and predictably suitable for use in forming such an inorganic high dielectric powder in an insulating layer of a metal-foil clad laminate. According to MPEP §2144.06(I), it has been held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.
Response to Arguments
Applicant's arguments filed 12 January 2026 have been fully considered but they are not persuasive.
The applicant argued Kawabe fails to describe strontium titanate particles and calcium titanate particles as claimed, and the reliance on Yoneda fails to establish any equivalence between the barium titanate in Kawabe and the claimed strontium titanate particles and calcium titanate particles for use in the specific curable resin described by Kawabe. The applicant notes that it is known that different kinds of titanates have different compatibility with a polyfunctional vinyl aromatic copolymer or have different processing conditions. The examiner respectfully disagrees and contends that Kawabe teaches the use of barium titanate as an example of the generically disclosed inorganic high dielectric powder; that is, Kawabe teaches (1st full paragraph on page 21) “[the use of] inorganic high dielectric powder such as barium titanate…” Therefore, the applicant’s arguments are not supported by the prior art because Kawabe generally discloses the use of inorganic high dielectric powders without providing any guidance that the use of such is limited to barium titanate, or that the use of other well-known inorganic high dielectric powders are to be avoided.
The applicant argued since each of Kawabe and Yoneda fail to describe the use of at least one of the strontium titanate particles and the calcium titanate particles in combination with a silica filler, neither Kawabe nor Yoneda describes the features that a content ratio of a high dielectric constant filler (C) including at least one of strontium titanate particles and calcium titanate particles to a silica filler (D) is 10:90 to 90:10 as a mass ratio, as claimed. The examiner respectfully disagrees and contends Kawabe teaches the use of a inorganic high dielectric powder and a silica filler, and the reliance on Yoneda to use a well-known inorganic high dielectric powder would reasonably lead one skilled in the art to the claimed feature in question. In other words, it is the consideration of Kawabe and Yoneda in combination, not when considered separately, which renders obvious the claimed relative mass ratio between the high dielectric constant filler (C) to the silica filler (D).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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