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.
Claims 1-2 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2020/0181402 A1) in view of Dana et al. (US 2002/0123285 A1) and Liu et al. ‘877 (US 2020/0053877 A1).
Regarding Claims 1-2, Liu discloses a resin composition comprising a resin system (A), a compound (B) (Abstract), and a filler (para 0109). The resin system (A) comprises a polyphenylene ether compound having groups such as the following (paras 0052-0053):
PNG
media_image1.png
66
130
media_image1.png
Greyscale
PNG
media_image2.png
80
74
media_image2.png
Greyscale
The resin system (A) may further comprise a bismaleimide compound (paras 0071, 0076), wherein the bismaleimide compound may have a phenylmaleimide group (para 0076-0077).
Liu does not disclose the filler including aluminum titanate particles or calcium titanate particles.
Dana discloses electronic supports including prepreg layers, laminates, and printed circuit boards (para 0029). Dana discloses an inorganic filler having low thermal expansion, such as aluminum titanate, may be used to reduce the z-axis thermal expansion of the electronic supports made therefrom, improving reliability and reducing cracking in printed circuit boards (paras 0063-0064).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Liu to incorporate the teachings of Dana and produce the resin composition wherein the filler comprises aluminum titanate. Doing so would reduce the z-axis thermal expansion of the electronic supports made therefrom, improving reliability and reducing cracking in printed circuit boards. Aluminum titanate is a ceramic particle as claimed.
Liu ‘877 discloses a dielectric resin composition comprising polyphenylene ether resin (paras 0012-0013) and maleimide crosslinking agent (para 0016), used for printed circuit boards (para 0026). Liu ‘877 discloses the dielectric resin composition may comprise inorganic filler such as calcium titanate, to improve the physicochemical properties of the dielectric layer, such as dielectric constant and TCDk, specifically noting that calcium titanate has a low TCDk (paras 0061-0062).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Liu in view of Dana to incorporate the teachings of Liu ‘877 and produce the composition of Liu using filler further comprising calcium titanate, which has a low TCDk. Doing so would improve the physicochemical properties of the dielectric layer, such as dielectric constant and TCDk. Calcium titanate is a ceramic particle as claimed.
Liu further discloses the filler comprises 0-40% of the total composition (para 0113), and compound (B) comprises 5-60 parts relative to 100 parts resin system (A) (para 0106). Resin system (A) comprises 30-90% polyphenylene ether (para 0057), 10-70% compound (a2) (para 0068), and 1-20% bismaleimide (para 0081).
Since the filler comprises 0-40% of the total composition, the total of resin system (A) and compound (B) comprises 60-100%.
Since compound (B) comprises 5-60 parts relative to 100 parts resin system (A), resin system (A) comprises 62.5% to 95.2% of the total of resin system (A) and compound (B) (
100
100
+
60
t
o
100
100
+
5
).
Therefore resin system (A) comprises 37.5% to 95.2% of the total composition (60*0.625 to 100*0.952).
The total of polyphenylene ether and bismaleimide in resin system (A) is 31% (30+1) to 90% (compound (a2) is a minimum of 10%).
Therefore the total of polyphenylene ether and bismaleimide in the total composition is 11.6% to 85.7% (37.5*0.31 to 95.2*0.90).
Therefore the content of filler is 0 to 345 parts relative to 100 parts of the total of polyphenylene ether and bismaleimide (
0
85.7
*
100
t
o
40
11.6
*
100
); and therefore the total content of polyphenylene ether and bismaleimide relative to 100 parts of the filler is 29 parts or more (
100
345
*
100
t
o
100
0
*
100
).
Regarding Claim 5, Liu in view of Dana and Liu ‘877 discloses all the limitations of the present invention according to Claim 1 above. Liu further discloses a prepreg comprising the resin composition and a fiber substrate, which may be semi-cured (paras 0124-0126).
Regarding Claims 7-9 and 11, Liu in view of Dana and Liu ‘877 discloses all the limitations of the present invention according to Claim 1 above. Liu further discloses a layer of the resin composition may be applied to a metal foil (i.e. support film), and may be laminated (i.e. cured) (para 0127). This may be used to form a printed circuit board (para 0128).
Regarding Claims 13 and 15, Liu in view of Dana and Liu ‘877 discloses all the limitations of the present invention according to Claim 5 above. Liu further discloses the prepreg may be applied to a metal foil, and may be laminated (i.e. cured) (para 0127). This may be used to form a printed circuit board (para 0128).
Regarding Claims 6, 10, 12, 14, and 16, Liu in view of Dana and Liu ‘877 discloses all the limitations of the present invention according to Claims 5, 9, 11, 13, and 15, above. Liu in view of Dana and Liu ‘877 does not disclose the relative dielectric constant or dielectric constant as claimed. However, since Liu in view of Dana and Liu ‘877 discloses product as claimed, including resin composition comprising polyphenylene ether, bismaleimide, and ceramic particles as claimed, in amounts as claimed, the products would inherently exhibit relative dielectric constant and dielectric constant as claimed.
Response to Arguments
In light of applicant’s amendments filed 03/30/2026, the 35 USC 112(b), 112(d), and 103 rejections of record are withdrawn.
New grounds of rejection are set forth above.
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
Applicant argues for the criticality of the combined use of aluminum titanate particles and calcium titanate particles as claimed, to achieve low dielectric loss tangent, pointing to the data of Example 16 (which comprises aluminum titanate and calcium titanate), compared to Example 15 (which uses aluminum titanate and strontium titanate) and Example 17 (which uses aluminum titanate and titanium dioxide).
Regarding Example 16 compared to Example 15, this is not found persuasive because Example 15 is not properly side-by-side in comparison to Example 16. Specifically, Example 15 uses 100 parts strontium titanate particles, while Example 16 used 80 parts calcium titanate particles.
Regarding Example 16 compared to Example 17, while the data is properly side-by-side, it is unclear how Example 16 produces results that are advantageous compared to those of Example 17. Both Examples 16 and 17 have relative dielectric constant of 4 or more and dielectric loss tangent of 0.0055 or less (as claimed in present Claim 6), coefficient of thermal expansion of 13 ppm/°C or less (which is the more preferred range according to the present Specification, paragraph 0118), and they have identical copper foil peel strength.
Examiner also notes: the data of Tables 1-3 in general is not commensurate in scope with the scope of the claims. Specifically, only Example 16 falls within the scope of the claims, and Example 16 uses a specific polyphenylene ether compound and a specific maleimide compound, while the present claims encompass any polyphenylene ether compound (A) having a group according to Formula (1) as claimed, and any maleimide compound (B) having a phenylmaleimide group. Further, Example 16 uses a specific ratio of polyphenylene ether compound (A) to maleimide compound (B) of 57 to 43, and a specific ratio of aluminum titanate particles (C1) to calcium titanate particles (C2) of 110 to 80, while the claims encompass any ratio of (A) to (B) and any ratio of (C1) to (C2). Further, there is no data at the endpoints of the claimed amount of total (A) and (B) relative to (C) (Example 16 uses 190 parts (C) with respect to 100 parts total (A) and (B), which is equivalent to 53 parts total (A) and (B) with respect to 100 parts (C)).
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787