Prosecution Insights
Last updated: October 02, 2026
Application No. 18/284,102

CURABLE RESIN COMPOSITION AND CURED OBJECT OBTAINED THEREFROM

Non-Final OA §103
Filed
Sep 26, 2023
Priority
Mar 30, 2021 — JP 2021-056835 +1 more
Examiner
KARST, DAVID THOMAS
Art Unit
3991
Tech Center
3900
Assignee
Nippon Kayaku Kabushiki Kaisha
OA Round
1 (Non-Final)
65%
Grant Probability
Moderate
1-2
OA Rounds
0m
Est. Remaining
74%
With Interview

Examiner Intelligence

Grants 65% of resolved cases
65%
Career Allowance Rate
655 granted / 1012 resolved
+4.7% vs TC avg
Moderate +10% lift
Without
With
+9.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
48 currently pending
Career history
1055
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
49.6%
+9.6% vs TC avg
§102
13.3%
-26.7% vs TC avg
§112
27.2%
-12.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1012 resolved cases

Office Action

§103
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 . Election/Restrictions Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 06/30/2026 is acknowledged. Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/302/2026. Priority Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Objections Claims 4 and 7 are objected to because of the following informalities: Claim 4 recites a period in line 8 that is not at the end of the claim and not for a reference character or abbreviation, and recites “In” in line 8, which is not at the beginning of the claim and not for a reference character or abbreviation. Claim 7 recites a period in lines 7 and 8 that are not at the end of the claim and not for a reference character or abbreviation. Each claim must begin with a capital letter and must end with a period (MPEP 608.01(m)). Periods may not be used elsewhere in the claims except for abbreviations (MPEP 608.01(m)). Appropriate correction is required. 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. Claims 1-7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2020-045446 A, machine translation in English used for citation) in view of Kuboki et al. (WO 2020/054601 A1, cited in IDS, made of record on 12/26/2023, US 2021/0261736 A1 is English language equivalent, is cited in IDS, and is used for citation). Regarding claim 1, Sato teaches a thermosetting resin composition comprising a thermosetting resin, wherein the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein R2 each independently represents a divalent hydrocarbon group derived from a dimer acid, Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms, and n represents a positive integer of 1 to 100 [0008], which reads on a curable resin composition comprising a maleimide resin (A) having a cyclic imide bond obtained by reacting a diamine (a-1) derived from a dimer acid, a tetracarboxylic dianhydride (a-2), and a maleic anhydride as claimed. Sato teaches that the thermosetting resin composition further comprises a curing accelerator [0008], which reads on the curable resin composition further comprising a curing accelerator (D) as claimed. Sato teaches that the thermosetting resin further contains at least one resin that is optionally an unsaturated imide resin [0008], that examples of the thermosetting resin include maleimide resins [0013], and that examples of the maleimide resin include bismaleimide resins [0016]. Sato does not teach that the curable resin composition further comprises a maleimide resin (B) represented by the following formula (1). However, Kuboki teaches a maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale [0015], where in the formula, n represents the number of repetitions, and 1<n<5 [0016], wherein the maleimide resin is present in a curable resin composition [0026], wherein a catalyst for curing that is a curing accelerator can be incorporated into the curable resin composition [0096]. Sato and Kuboki are analogous art because both references are in the same field of endeavor of a curable resin composition comprising a maleimide resin and a curing accelerator. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Kuboki’s maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale , where in the formula, n represents the number of repetitions, and 1<n<5, to modify Sato’s thermosetting resin in Sato’s thermosetting resin composition. The proposed modification would read on the curable resin composition further comprising a maleimide resin (B) represented by the following formula (1), in the formula (1) plural R reach independently represent a hydrogen atom or an alkyl group having 1 to 5 carbon atoms, m represents an integer of 0, or plural R each independently represent a hydrogen atom, m represents an integer of 0 to 3, n represents the number of repetitions, and an average value thereof is 1 < n < 5 as claimed. One of ordinary skill in the art would have been motivated to do so because Kuboki teaches that the maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale [0015], where in the formula, n represents the number of repetitions, and 1<n<5 [0016], is beneficial for being produced at low cost, for having excellent solution stability, for having significantly improved workability, and for allowing a dielectric constant and a dielectric loss tangent to be kept low in a cured product of a curable resin composition using the maleimide resin [0030], which would have been desirable for Sato’s thermosetting resin in Sato’s thermosetting resin composition because Sato teaches that the thermosetting resin further contains at least one resin that is optionally an unsaturated imide resin [0008], that examples of the thermosetting resin include maleimide resins [0013], that examples of the maleimide resin include bismaleimide resins [0016], that another bismaleimide in the thermosetting resin composition is excellent in compatibility with the bismaleimide resin [0009], that the viscosity of the composition can be reduced without using organic solvents [0009], and that when a cured product of the thermosetting resin composition is formed, low dielectric properties can be realized [0009]. The Office recognizes that all of the claimed physical properties are not positively taught by Sato, namely that the components (A), (B), and (D) are compatible with one another. However, Sato in view of Kuboki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the components (A), (B), and (D) as explained above. Furthermore, the specification of the instant application recites that the present invention has been made in view of such circumstances and relates to a resin composition containing maleimide resins that are compatible with each other even when main skeletons are different from each other [0008], that the curable resin composition according to the present invention is excellent in solution stability and compatibility [0025], that the maleimide resin (A) and the maleimide resin (B) have excellent compatibility [0099], that in the present application, "compatible" means that, when a curable resin composition formed by uniformly mixing two or more types of resins is liquid, the haze of the solution is less than 50; or when a cured object is formed, it means that the glass transition temperature (Tg) of the curable resin composition is measured only at one point [0099], and that examples of the curing accelerator include imidazoles [0156]. Also, Sato teaches that examples of the curing accelerator include an imidazole-based compound and that an imidazole-based compound is preferable [0039]. Therefore, the claimed physical properties would naturally arise from the components (A), (B), and (D) that are rendered obvious by Sato in view of Kuboki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)). Regarding claim 2, Sato teaches that the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein R2 each independently represents a divalent hydrocarbon group derived from a dimer acid, Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms, and n represents a positive integer of 1 to 100 [0008], wherein examples of the tetracarboxylic dianhydride include pyromellitic anhydride and bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride, wherein these may be used alone or in combination of two or more [0024], which reads on wherein the component (A) is represented by the following formula (2), in the formula (2), R1 represents a divalent hydrocarbon group (a) derived from a dimer acid, R2 represents a divalent organic group (b) other than the divalent hydrocarbon group (a) derived from a dimer acid, R3 represents any one selected from the group consisting of the divalent hydrocarbon group (a) derived from a dimer acid, and the divalent organic group (b) other than the divalent hydrocarbon group (a) derived from a dimer acid, and R4 and R5 each independently contain one or more organic groups selected from a tetravalent organic group having 8 carbon atoms and having a condensed polycyclic alicyclic structure, in an amount of 0 mol% to 100 mol% when a total amount of R4 and R5 is 100 mol%, m is an integer of 1 to 100, n is an integer of 0, in a case where m is 2 or more, plural R1 and R4 may be the same or different, and in a case where n is 2 or more, plural R2 and R5 may be the same or different. Sato does not teach a specific embodiment where in the formula (2), R4 and R5 each independently contain one or more organic groups selected from a tetravalent organic group having 6 to 40 carbon atoms and having a monocyclic or a condensed polycyclic alicyclic structure, a tetravalent organic group having 4 to 40 carbon atoms in which organic groups having a monocyclic alicyclic structure are linked to one another directly or via a crosslinked structure, and a tetravalent organic group having 4 to 40 carbon atoms and having a semi-alicyclic structure including both an alicyclic structure and an aromatic ring, in an amount of 5 mol% to 95 mol% when a total amount of R4 and R5 is 100 mol%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select a combination of Sato’s pyromellitic anhydride and Sato’s bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride as Sato’s tetracarboxylic dianhydride that is reacted to obtain Sato’s bismaleimide resin in Sato’s thermosetting resin in Sato’s thermosetting resin composition, and to optimize the amount of Sato’s bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride to be from 5 mol% to 95 mol% based on 100 mol% of the combination of Sato’s pyromellitic anhydride and Sato’s bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride. The proposed modification would read on where in the formula (2), R4 and R5 each independently contain one or more organic groups selected from a tetravalent organic group having 8 carbon atoms and having a condensed polycyclic alicyclic structure, in an amount of 5 mol% to 95 mol% when a total amount of R4 and R5 is 100 mol% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying the heat resistance of Sato’s thermosetting resin composition and for optimizing the heat resistance of Sato’s thermosetting resin composition because Sato teaches that the thermosetting resin composition comprises the thermosetting resin, that the thermosetting resin is obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with the tetracarboxylic dianhydride, and maleic anhydride [0008], that examples of the tetracarboxylic dianhydride include pyromellitic anhydride and bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride, that these may be used alone or in combination of two or more, and that among these, pyromellitic anhydride is preferable form the viewpoint of heat resistance [0024], which means that the amount of Sato’s bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride in mol% based on 100 mol% of the combination of Sato’s pyromellitic anhydride and Sato’s bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride would have affected the heat resistance of Sato’s thermosetting resin composition. Sato does not teach a specific embodiment where in the formula (2), m is an integer of 1 to 30. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize Sato’s n in Sato’s general formula PNG media_image1.png 154 536 media_image1.png Greyscale to be a positive integer of 1 to 30. The proposed modification would read on in the formula (2), m is an integer of 1 to 30 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesiveness and low dielectric characteristics of Sato’s thermosetting resin composition because Sato teaches that n represents a positive integer of 1 to 100 [0008], and that n is preferably an integer of 5 to 30 from the viewpoint of obtaining more excellent adhesiveness and more excellent low dielectric characteristics [0018]. Regarding claim 3, Sato teaches that examples of the tetracarboxylic dianhydride include pyromellitic anhydride, 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride, 1,4,5,8-naphthalenetetracarboxylic acid dianhydride, 3,4,9,10-perylenetetracarboxylic acid dianhydride, bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride, and 3,3′,4,4′-biphenyltetracarboxylic dianhydride, wherein these may be used alone or in combination of two or more [0024], which reads on wherein the component (a-2) is represented by the formula (3-a), in the formula (3-a), R6 represents a tetravalent organic group having 4, 8, 10, 12, or 20 carbon atoms including a hydrocarbon ring, and the organic group may contain an aromatic ring as claimed. Regarding claim 4, Sato teaches that examples of the tetracarboxylic dianhydride include 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride, and bicyclo(2.2.2)oct-7-ene-1,4,4-tetracarboxylic dianhydride [0024], which reads on wherein the component (a-2) is selected from the group consisting of the formulae (4-1a) and (4-4a), in the formula (4-4a), X1 represents a divalent organic group having 2 carbon atoms as claimed. Regarding claims 5 and 6, Sato teaches that the thermosetting resin composition comprises the thermosetting resin, wherein the thermosetting resin further comprises a bismaleimide resin represented by the following general formula PNG media_image3.png 150 214 media_image3.png Greyscale [0008], which reads on the curable resin composition according to claim 1, further comprising a thermosetting resin (C) other than the component (A) and the component (B) as claimed, wherein the component (C) is one or more selected from a maleimide compound other than the component (A) and the component (B) as claimed. The Office recognizes that all of the claimed physical properties are not positively taught by Sato, namely wherein the components (A) to (D) are compatible with one another. However, Sato in view of Kuboki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the components (A) to (D) as explained above. Furthermore, the specification of the instant application recites that the present invention has been made in view of such circumstances and relates to a resin composition containing maleimide resins that are compatible with each other even when main skeletons are different from each other [0008], that the curable resin composition according to the present invention is excellent in solution stability and compatibility [0025], that the maleimide resin (A) and the maleimide resin (B) have excellent compatibility [0099], that in the present application, "compatible" means that, when a curable resin composition formed by uniformly mixing two or more types of resins is liquid, the haze of the solution is less than 50; or when a cured object is formed, it means that the glass transition temperature (Tg) of the curable resin composition is measured only at one point [0099], and that examples of the curing accelerator include imidazoles [0156]. Also, Sato teaches that examples of the curing accelerator include an imidazole-based compound, that an imidazole-based compound is preferable [0039], and that the bismaleimide resin [0009] represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale [0008] is excellent in compatibility with the bismaleimide resin [0009] represented by the following general formula PNG media_image3.png 150 214 media_image3.png Greyscale [0008]. Therefore, the claimed physical properties would naturally arise from the components (A) to (D) that are rendered obvious by Sato in view of Kuboki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)). Regarding claim 7, Sato teaches that the thermosetting resin composition comprises the thermosetting resin, wherein the thermosetting resin further comprises a bismaleimide resin represented by the following general formula PNG media_image3.png 150 214 media_image3.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid with maleic anhydride, where in the formula, R1 represents a divalent hydrocarbyl group derived from a dimer acid [0008], wherein the dimer diamine is represented by the following general formula [0019] PNG media_image4.png 162 456 media_image4.png Greyscale [0020], wherein in the formula, q, r, and s each represent an integer of 1 or more selected so as to be r+s=8-19, and may be an integer of 1 to 12, where in the formula, a bond indicated by a broken line means a carbon-carbon single bond or a carbon-caron double bond, provided that when the bond indicated by the broken line is a carbon-caron double bond, a compound represented by the formula has a structure in which the number of hydrogen atoms bonded to each carbon atom constituting the carbon-carbon double bond is reduced by one from the number shown in the formula [0021], which reads on wherein the component (C) is a compound represented by the formula (5), in the formula (5), Ra and Rb each independently represents a linear alkyl having 3 to 14 carbon atoms, or a linear alkenyl group having 14 carbon atoms, na represents the number of 3 to 14, and nb represents the number of 3 to 14, na and nb may be the same or different as claimed. Regarding claim 10, Sato teaches that the thermosetting resin composition further comprises at least one of a polymerization initiator and a curing accelerator [0008], that the curing accelerator comprises at least one compound that is an imidazole-based compound [0008], and that the polymerization initiator includes a thermal radical polymerization initiator [0008], which reads on wherein the component (D) contains at least one selected from a thermal radical polymerization initiator and an imidazole compound as claimed. Regarding claim 11, Sato teaches that the thermosetting resin composition further comprises a polymerization initiator [0008], that the polymerization initiator includes a thermal radical polymerization initiator [0008], and a conventionally used organic peroxide-based compound an be appropriately used [0034], which reads on wherein the thermal radical polymerization initiator is an organic peroxide as claimed. Regarding claim 12, Sato teaches that the content of the bismaleimide resin represented by the general formula PNG media_image1.png 154 536 media_image1.png Greyscale is 80 to 100% by mass based on the total amount of the thermosetting resin [0008], that when the total amount of the thermosetting resin and the bismaleimide resin represented by the general formula PNG media_image3.png 150 214 media_image3.png Greyscale is 100 parts by mass, the content of the bismaleimide resin represented by the general formula PNG media_image3.png 150 214 media_image3.png Greyscale is 20 to 80 parts by mass [0008], and that the content of the curing accelerator is preferably 0.1 to 10 parts by mass with respect to 100 parts by mass of the total amount of the thermosetting resin and the bismaleimide resin [0043], which reads on wherein a content of the component (A) is 15 wt% or more and less than 80 wt% in a total amount of the curable resin composition, which reads on the claimed range with sufficient specificity. The content of the component (A) is based on the calculations 100 / (100 + 10) * (100 - 80) / 100 * 80 / 100 * 100% = 15% and 100 / (100 + 0.1) * (100 - 20) / 100 * 100 / 100 * 100% = 80%. Sato teaches that the thermosetting resin further contains at least one resin that is optionally an unsaturated imide resin [0008], that examples of the thermosetting resin include maleimide resins [0013], and that examples of the maleimide resin include bismaleimide resins [0016]. Based on Sato’s teachings, the content of Sato’s at least one resin that is optionally an unsaturated imide resin is more than 0 wt% and less than or equal to 16 wt% in a total amount of Sato’s thermosetting resin composition. The content of Sato’s at least one resin that is optionally an unsaturated imide resin is based on the calculations 100 / (100 + 10) * (100 - 80) / 100 * (100 - 100) / 100 * 100% = 0% and 100 / (100 + 0.1) * (100 - 20) / 100 * (100 - 80) / 100 * 100% = 16%. Sato does not teach that a content of the component (B) is 3 wt% or more and less than 60 wt% in a total amount of the curable resin composition, and that the content of the component (A) is larger than the content of the component (B). However, Kuboki teaches a maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale [0015], where in the formula, n represents the number of repetitions, and 1<n<5 [0016], wherein the maleimide resin is present in a curable resin composition [0026], wherein a catalyst for curing that is a curing accelerator can be incorporated into the curable resin composition [0096]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Kuboki’s maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale , where in the formula, n represents the number of repetitions, and 1<n<5, to modify Sato’s thermosetting resin in Sato’s thermosetting resin composition, such that Kuboki’s maleimide resin and Sato’s bismaleimide resin represented by the general formula PNG media_image1.png 154 536 media_image1.png Greyscale are the only ingredients in Sato’s thermosetting resin in Sato’s thermosetting resin composition. The proposed modification would read on wherein a content of the component (B) is more than 0 wt% and less than or equal to 16 wt% in a total amount of the curable resin composition, and the content of the component (A) is larger than the content of the component (B), which reads on the claimed range with sufficient specificity. The content of the component (B) is based on the calculations 100 / (100 + 10) * (100 - 80) / 100 * (100 - 100) / 100 * 100% = 0% and 100 / (100 + 0.1) * (100 - 20) / 100 * (100 - 80) / 100 * 100% = 16%. One of ordinary skill in the art would have been motivated to do so because Kuboki teaches that the maleimide resin represented by the following formula PNG media_image2.png 250 606 media_image2.png Greyscale [0015], where in the formula, n represents the number of repetitions, and 1<n<5 [0016], is beneficial for being produced at low cost, for having excellent solution stability, for having significantly improved workability, and for allowing a dielectric constant and a dielectric loss tangent to be kept low in a cured product of a curable resin composition using the maleimide resin [0030], which would have been desirable for Sato’s thermosetting resin in Sato’s thermosetting resin composition because Sato teaches that the thermosetting resin further contains at least one resin that is optionally an unsaturated imide resin [0008], that examples of the thermosetting resin include maleimide resins [0013], that examples of the maleimide resin include bismaleimide resins [0016], that another bismaleimide in the thermosetting resin composition is excellent in compatibility with the bismaleimide resin [0009], that the viscosity of the composition can be reduced without using organic solvents [0009], that when a cured product of the thermosetting resin composition is formed, low dielectric properties can be realized [0009], that the content of the bismaleimide resin represented by the general formula PNG media_image1.png 154 536 media_image1.png Greyscale is 80 to 100% by mass based on the total amount of the thermosetting resin [0008], and that when the content of the bismaleimide resin is 80% by mass or more, an advantage that low dielectric properties and low water absorption are more excellent is obtained [0027]. Regarding claim 13, the Office recognizes that all of the claimed physical properties are not positively taught by Sato, namely that the curable resin composition according to claim 1 has a haze value of less than 50 that is measured at an optical path length of 10 m in accordance with JIS K7136. However, Sato in view of Kuboki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the curable resin composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that the maleimide resin (A) and the maleimide resin (B) have excellent compatibility [0099], and that in the present application, "compatible" means that, when a curable resin composition formed by uniformly mixing two or more types of resins is liquid, the haze of the solution is less than 50 [0099]. Therefore, the claimed physical properties would naturally arise from the curable resin composition that is rendered obvious by Sato in view of Kuboki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)). Regarding claim 14, Sato teaches a resin film obtained by applying the thermosetting resin composition to various substrates [0055], and a printed circuit board comprising the resin film comprising the thermosetting resin composition [0056], which reads on a resin sheeting comprising the curable resin composition according to claim 1 as claimed. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2020-045446 A, machine translation in English used for citation) in view of Kuboki et al. (WO 2020/054601 A1, cited in IDS, made of record on 12/26/2023, US 2021/0261736 A1 is English language equivalent, is cited in IDS, and is used for citation) as applied to claim 1, and further in view of Tsurui (JP 2020-158704 A, machine translation in English used for citation). Regarding claim 8, Sato in view of Kuboki renders obvious the curable resin composition according to claim 1 as explained above. Sato teaches that the thermosetting resin composition comprises a thermosetting resin, wherein the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms [0008]. Sato does not teach that the component (a-2) is a compound represented by the formula (6). However, Tsurui teaches 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride that is an aliphatic tetracarboxylic dianhydride [0096] that is a tetracarboxylic acid anhydride that is used for preparing a polyimide resin [0088] that is obtained by an imidazation reaction between a diamine compound a tetracarboxylic acid anhydride [0072], wherein a maleimide resin having a dimer acid skeleton that is a bismaleimide compound having a hydrocarbon skeleton derived from dimer acid that is obtained by subjecting at least a dimer acid type diamine, a tetracarboxylic dianhydride, and maleic anhydride to an imidazation reaction [0100], wherein the polyimide resin or the maleimide resin having a dimer acid skeleton is present in a resin composition further comprising a thermosetting resin [0007]. Sato and Tsurui are analogous art because both references are in the same field of endeavor of a curable resin comprising a maleimide resin having a cyclic imide bond. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Tsurui’s 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride to substitute for Sato’s tetracarboxylic dianhydride that is reacted to obtain Sato’s bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale . The proposed modification would read on wherein the component (a-2) is a compound represented by the formula (6) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermosetting properties of Sato’s thermosetting resin composition because Tsurui teaches that the 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride is an aliphatic tetracarboxylic dianhydride [0096] that is a tetracarboxylic acid anhydride that is used for preparing a polyimide resin [0088] that is obtained by an imidazation reaction between a diamine compound a tetracarboxylic acid anhydride [0072], wherein a maleimide resin having a dimer acid skeleton that is a bismaleimide compound having a hydrocarbon skeleton derived from dimer acid that is obtained by subjecting at least a dimer acid type diamine, a tetracarboxylic dianhydride, and maleic anhydride to an imidazation reaction [0100], wherein the polyimide resin or the maleimide resin having a dimer acid skeleton is present in a resin composition further comprising a thermosetting resin [0007], and because Sato teaches that the thermosetting resin composition comprises a thermosetting resin, wherein the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms [0008]. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2020-045446 A, machine translation in English used for citation) in view of Kuboki et al. (WO 2020/054601 A1, cited in IDS, made of record on 12/26/2023, US 2021/0261736 A1 is English language equivalent, is cited in IDS, and is used for citation) as applied to claim 1, and further in view of Saluti et al. (US 3,763,114). Regarding claim 8, Sato in view of Kuboki renders obvious the curable resin composition according to claim 1 as explained above. Sato teaches that the thermosetting resin composition comprises a thermosetting resin, wherein the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms [0008]. Sato does not teach that the component (a-2) is a compound represented by the formula (7). However, Saluti teaches 3,4-dicarboxy-1,2,3,4-tetrahydro-1-naphthalenesuccinic dianhydride that is a dianhydride (2:16-23) that is reacted with methylenedianiline and maleic anhydride to obtain a polyimide polymer (1:46-50) that is able to be cured (1:12-20). Sato and Saluti are analogous art because both references are in the same field of endeavor of a curable resin composition comprising a maleimide resin having a cyclic imide bond. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Saluti’s 3,4-dicarboxy-1,2,3,4-tetrahydro-1-naphthalenesuccinic dianhydride to substitute for Sato’s tetracarboxylic dianhydride that is reacted to obtain Sato’s bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale . The proposed modification would read on wherein the component (a-2) is a compound represented by the formula (7) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermosetting and/or curing properties of Sato’s thermosetting resin composition because Saluti teaches that the 3,4-dicarboxy-1,2,3,4-tetrahydro-1-naphthalenesuccinic dianhydride is a dianhydride (2:16-23) that is reacted with methylenedianiline and maleic anhydride to obtain a polyimide polymer (1:46-50) that is able to be cured (1:12-20), and because Sato teaches that the thermosetting resin composition comprises a thermosetting resin, wherein the thermosetting resin comprises a bismaleimide resin represented by the following general formula PNG media_image1.png 154 536 media_image1.png Greyscale obtained by reacting a dimer diamine which is a diamine derived from a dimer acid, with a tetracarboxylic dianhydride, and maleic anhydride, wherein Q each independently represents a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms [0008]. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM. 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, Mark Eashoo can be reached at 571-272-1197. 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. /DAVID T KARST/Primary Examiner, Art Unit 1767
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Prosecution Timeline

Sep 26, 2023
Application Filed
Sep 02, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
65%
Grant Probability
74%
With Interview (+9.8%)
2y 11m (~0m remaining)
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