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 Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites “The resin composition according to any one of claim 1”. The claim should instead read “The resin composition according to claim 1”.
Appropriate correction is required.
Claim Analysis
Summary of Claim 1:
A resin composition, wherein the resin composition comprises the following components: (A) a resin containing unsaturated bonds, (B) an initiator, and (C) an inorganic filler which has been subjected to surface treatment by a silane coupling agent; the silane coupling agent contains a structure shown in formula (I):
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formula (I);
in formula (I), Ri and R2 are each independently selected from methyl or ethyl, m and n are each independently selected from integers from 1 to 4, and K and L are each independently selected from integers from 1 to 30, wherein an order of each repeating unit is arbitrary.
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tsutsumi et al. (US 20210054152) in view of Takeda et al. (WO 2008032722).
The examiner refers to the English translation of Takeda et al. provided in this Office Action.
Regarding claim 1, 2, and 3, Tsutsumi et al. disclose a resin composition Working Example 6 comprising a polyphenylene ether, initiator, and an inorganic filler that is a treated silica (Table 1). Tsutsumi et al. further disclose the silica is prepared by treating the silica with a methacrylic group-modified silane coupling agent [0115], thereby reading on components A,B, and an inorganic filler that has been subject to surface treatment by a silane coupling agent.
Tsutsumi et al. does not disclose the inorganic filler is subjected to surface treatment by the coupling agent recited in formula 1 of the instant claim.
Takeda et al. teaches a coating material comprising a polymer bonded to inorganic particles having reactive groups, wherein the inorganic particles are silica (claim 2). Takeda et al. further teach in Example 2 3-methacryloxypropyltrimethoxysilane, trifluoropropyltrimethoxysilane, and hollow silica were reacted to form the inorganic particle [0161], thereby reading on formula I wherein R1 and R2 is methyl, m is 3, and n is 3. Takeda offer the motivation that the silane compounds improve the dispersibility of the inorganic particles [0078]. Increasing dispersibility improves mechanical properties. Tsutsumi et al. is also concerned with improving mechanical properties such as adhesion force[0074]. Therefore, it would have been obvious to one of ordinary skill in the art to add the inorganic filler of Takeda et al. with the resin composition of Tsutsumi et al. with reasonable expectation that the dispersibility and therefore the adhesion would improve.
Takeda et al. is silent on K and L of formula I and the amount of fluorine atoms and acryloyloxy groups as recited in instant claim 1, 2, and 3 respectively.
However, Takeda et al. teach that the amount of 3-metjacryloxypropyltrimethoxysilane is less than 1%, then low temperature heating to form the film becomes difficult. If it exceeds 50% by mass, the refractive index becomes 1 [0044]. Takeda et al. also teach if the amount of trifluoropropyltrimethoxysilane is less than 5% by mass, the surface slipperiness of the film formed from the coating material is lowered. If it exceeds 50 mass%, the hardness of the film formed from the coating material will decrease [0050]. Therefore, the amount of repeating units formed from the integers K and L of instant claim 1, fluorine atoms of instant claim 2 and acryloyloxy groups of instant claim 3 would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount of K and L, fluorine atoms, and acryloyloxy groups cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of K and L, fluorine atoms, and acryloyloxy of Takeda et al. to reach the desired processing parameters and properties since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding claim 4, Tsutsumi et al. is silent on the amount of coupling agent to inorganic filler as recited in the instant claim.
However, Tsutsumi et al. broadly teaches the amount of coupling agent present is 0.1 to 8.0% by mass per the sum of the polyphenylene ether resin, (meth)acrylic acid ester compound, and cyclic imide compound and the amount of filler is 50 to 800 parts by mass per 100 parts by mass of the polyphenylene ether resin, (meth)acrylic acid ester compound, and cyclic imide compounds [0067-0076]. Assuming a basis of 100 parts by mass of the polyphenylene ether resin, (meth)acrylic acid ester compound, and cyclic imide compound, the amount of coupling agent is 0.1 to 8 parts by mass and is equivalent to an amount of 0.0125% to 16% of coupling agent to 100% of inorganic filler (calculated by 0.1/800×100 = 0.0125% and 8/50×100 = 16%), and thereby overlapping with the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Tsutsumi et al.
Regarding claims 5 and 6, Tsutsumi et al. disclose Working Example 6 comprises 60 parts by mass of polyphenylene resin and 70 parts by mass of organic filler, equivalent to component A being 46.1% (calculated from 60+70=130 total parts of A+C, 60/130×100 = 46.1%) and component C is 53.9 % (100%-46.1% = 53.9) and thereby lying within the claimed range.
Regarding claim 7, Tsutsumi et al. disclose Working Example 6 comprises 1 parts by mass of initiator, equivalent to component (B) being 0.77% (calculated from 60+70=130 total parts of A+C, 1/130×100 = 0.77%) and thereby lying within the claimed range.
Regarding claim 8, Tsutsumi et al. disclose the inorganic filler of Working Example 6 is silica as rejected above, thereby reading on the instant claim.
Regarding claim 9, Tsutsumi et al. disclose the resin of Working Example 6 is a polyphenylene ether containing unsaturated bonds as rejected above, thereby reading on the instant claim.
Regarding claim 10, Tsutsumi et al. disclose the initiator used in Working Example 6 is dicumylperoxide, thereby reading on the peroxide of the instant claim.
Regarding claim 11, Tsutsumi et al. disclose the resin composition is used to form a varnish [0116], thereby reading on the instant claim.
Regarding claim 12, Tsutsumi et al. disclose the resin varnish solvent is anisole [0116].
Tsutsumi et al. do not disclose the solvent as recited in the instant claim.
However, Tsutsumi et al. broadly teach solvents such as toluene can be used [0077-0079]. Therefore, it would have been obvious to one of ordinary skill in the art to try to use toluene as the solvent instead of anisole with as taught by Tsutsumi et al.
Regarding claim 13, Tsutsumi et al. is silent on if Working Example 6 is used to form an insulating adhesive film.
However, Tsutsumi et al. broadly teach the resin composition can be used as an insulation layer in a circuit board [0094-0102], thereby reading on the insulating adhesive film of the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to form an insulating adhesive film as taught by Tsutsumi et al.
Regarding claim 14, Tsutsumi et al. is silent on the thickness of the insulting adhesive film of the resin composition.
However, Tsutsumi et al. broadly teaches the thickness of the adhesive film used in a circuit board is 10 to 100 µm [0084], thereby reading on the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the range as broadly taught by Tsutsumi et al.
Regarding claims 15, 16, and 17, Tsutsumi et al. is silent on the dielectric loss, ΔDf, and surface roughness Ra as recited in instant claim 15, 16, and 17 respectively.
However, the properties In view of the substantially identical insulating adhesive film of Tsutsumi et al., the substantially identical insulating adhesive film of Tsutsumi et al. will possess the claimed properties because dielectric loss, ΔDf, and surface roughness Ra are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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