DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara et al, US20180327593A1.
Regarding claims 1-3, and 6, Kasahara teaches a resin composition comprising a polyimide compound (A) derived from a maleimide compound and a diamine compound, and an inorganic filler (C), abstract. The polyimide compound reads on the claimed prepolymer insofar as it is prepared in a separate polymerization reaction before being mixed with the other resin components ¶[0051], including the filler (C), and has reactive functional groups that undergo further polymerization after mixing with the other components and curing during the formation of the article, ¶[0082], which aligns with applicant’s meaning of prepolymer in ¶[0026] of the instant specification.
The polyimide is formed from a maleimide structural unit which is a bismaleimide that can be selected as polyphenylmethane maleimide, ¶[0024], which also reads on claim 6. The diamine is preferably selected as 4,4′-[1,3-phenylenebis(1-methylethylidene)]bisaniline, ¶[0032], also known as Bisaniline M and reads on applicant’s diamine of formula 1. The preferred content ratio of maleimide to diamine is an equivalent group ratio of 1-10, ¶[0036], which converts to a molar ratio of the same because the bismaleimide has two functional groups and the diamine has two functional groups. This content ratio encompasses the claimed molar ratio, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The inorganic filler is selected from a list including the ceramic fillers of magnesium oxide and boron nitride, ¶[0066], which also reads on claim 2. Kasahara does not teach the thermal conductivity of these individual fillers, but because applicant uses these same fillers and lists their conductivities as 36 W/(m·K) and 60 W/(m·K) respectively on pages 24 and 25 of the instant specification, the same fillers listed by Kasahara also have those conductivities, which also reads on claim 3. Furthermore, the inorganic filler is preferably 40-300 parts by mass per 100 parts of the solid resin components in the resin composition, ¶[0072]. The polyimide (A) is preferably present in the resin composition from 50-95 wt.%, ¶[0055], which means the filler can be added in a ratio of 40/95 = 42.1 parts filler to 100 parts polyimide, up to 300/50 = 600 parts filler/100 parts polyimide, which encompasses the claimed 150-200 parts filler/100 parts prepolymer.
The fact that Kasahara discloses numerous types of inorganic fillers which can be suitably selected to form a resin composition does not render any particular combination of polyimide and inorganic filler less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Regarding claim 4, Kasahara teaches the polyimide is obtained by reacting the bismaleimide (a1) and diamine (a2), with an optional solvent and catalyst ¶¶[0048, 0050], in a polymerization reaction at a temperature of 50-160°C for 1-10 hours, ¶[0051], both of which overlap with the claimed reaction temperature and time.
Regarding claim 5, Kasahara teaches a prepolymerization procedure that overlaps in reaction time and temperature, as described in claim 4 above. Kasahara does not explicitly teach the conversion rate, but based on applicant’s description in ¶[0032] of the instant specification, the reaction will inherently have a 10-90% conversion rate when reacted in the overlapping portions of the claimed time and temperature range.
Regarding claim 7, Kasahara teaches the resin composition further comprises flame retardants and/or a curing accelerator, ¶[0073]. There also may be a silane coupling agent to improve dispersibility of the inorganic filler, ¶[0068].
Regarding claim 8, Kasahara teaches an article made from the resin composition comprising the polyimide prepolymer and inorganic filler, the article is a resin film, a composite (laminate), or a printed circuit board, ¶¶[0001, 0180].
Regarding claims 9 and 10, Kasahara teaches the article of the composite film comprising the resin composition has a dielectric tangent of 0.005 or less measured at 5GHz, ¶[0167]. The dielectric tangent is also known as the dissipation factor. Kasahara does not explicitly teach the dissipation factor measured at 10GHz, nor the dielectric constant at 10GHz. But because Kasahara teaches articles comprising the claimed prepolymer and ceramic fillers in overlapping amounts for the same field of use, the skilled artisan is reasonably suggested the articles of Kasahara must have the claimed dissipation factor of 0.002 or less measured at 10GHz and the claimed dielectric constant of 5.05 or less.
Regarding claim 11, Kasahara teaches the resin composition and article made thereof as explained above. Kasahara does not teach the thermal conductivity of the article. But because Kasahara teaches articles comprising the claimed prepolymer and ceramic fillers in overlapping amounts for the same field of use, the skilled artisan is reasonably suggested the articles of Kasahara must have the claimed thermal conductivity.
Regarding claim 12, Kasahara teaches a peel strength of the composite film comprising the resin composition is preferably 0.7 Kgf/cm or higher, ¶[0168], which converts to 0.61 lb/in, and overlaps with the claimed range because there is no upper limit disclosed by Kasahara. The adhesion tests are performed against plated copper ¶¶[0237, 0269]. Furthermore, Kasahara teaches in examples 5 and 6, table 3 ¶[0269], that the peel strengths against plated copper are 0.71 kN/m and 0.73 kN/m respectively, which are equal to 4.05 lb/in and 4.17 lb/in. Although these examples do not contain the claimed ceramic filler, ¶¶[0256, 0264], and instead use surface treated silica, it would be obvious to the skilled artisan to substitute the silica for the magnesium oxide or boron nitride and obtain a peel strength of 0.71 kN/m or 0.72 kN/m with the motivation of producing another permutation of a composite film for printed circuit boards with good adhesion.
Regarding claim 13, Kasahara teaches the article was is evaluated for handling ability by bending, ¶[0227]. The results of the tests shown in table 1, page 19, only give a rating of A or B (A for excellent properties, ¶[0228]), and Kasahara is silent as to how many bending cycles were tested, or if the article is only bent once. But because Kasahara teaches articles comprising the claimed prepolymer and ceramic fillers in overlapping amounts for the same field of use, the skilled artisan is reasonably suggested the articles of Kasahara must have the claimed bending ability of greater than or equal to 323 cycles.
Regarding claims 14 and 15, Kasahara teaches the resin composition and article made thereof as explained above. Kasahara does not teach the elongation or the routing distance of the article. Kasahara further teaches that the bismaleimide (a1) for the polyimide, it is recommended that 2,2-bis(4-(4-maleimidophenoxy)phenyl)propane (another name for bisphenol A diphenyl ether bismaleimide which is listed in claim 6) is used for excellent mechanical characteristics such as adhesion, elongation, and breaking strength, ¶[0025], which suggests the compositions and articles of Kasahara are intended to have excellent mechanical properties for their field of use. Kasahara teaches articles comprising the claimed prepolymer and ceramic fillers in overlapping amounts for the same field of use, therefore the skilled artisan is reasonably suggested the articles of Kasahara must have the elongation and routing distance as claimed.
Response to Arguments
Applicant's arguments filed 4/14/2026 have been fully considered but they are not persuasive.
Applicant's argument of unexpected results is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected, unexpected results must be compared with the closest art, and unexpected results must be commensurate in scope with the claims.
Applicant’s evidence is acknowledged as demonstrating improved bending ability, elongation, and routing distance for the specific examples shown in the specification, but the results are not compared to the closest art, and the results are not commensurate in scope with the claims. Applicant argues that the unexpected results are from the use of the boron nitride (BN), aluminum nitride (AlN), and the magnesium oxide (MgO), but the claim is directed to any ceramic filler with a thermal conductivity greater than 30 W/(m·K). There are numerous ceramic fillers with thermal conductivities greater than this, and additionally in claim 2 where applicant narrows the fillers to certain species, there are several listed that are not part of the unexpected results. Furthermore, the examples also use prepolymers derived from specific maleimide compounds, BMI-80 and BMI-TMH, whereas claim 1 is directed to any maleimide compound. Therefore the claims are broader in scope than the results.
In response to applicant’s argument that the claimed amount of ceramic filler produces unexpected results, the data provided in the examples shows an improvement over the claimed range of parts for those examples but as explained above, it is not commensurate in scope with the claims due to the generic ingredients. Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In response to applicant’s argument that the properties cannot be derived from the content disclosed in Kasahara examiner points to the fact Kasahara teaches articles comprising the claimed prepolymer and ceramic fillers in overlapping amounts for the same field of use, therefore the skilled artisan is reasonably suggested the articles of Kasahara must have the bending ability, elongation, and routing distance as claimed. Applicant’s evidence does not establish that the asserted properties are absent from the compositions of Kasahara. To the extent that the asserted properties result from the disclosed species of ceramic fillers within the disclosed range of parts, they would reasonably be expected to be present in the compositions of Kasahara. Recognition of a previously unknown property of a composition does not render the composition patentable. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
For the reasons given above, the 103 rejection over Kasahara is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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