DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claims 1-12: They recite “low-dielectric” resin composition (Emphasis added). However, the claimed term “low” is a relative expression, which can be interpreted subjectively absent any definition or guidance in the specification. Yet, the instant specification does not define or provide any explanation, definition or much guidance to understand the meaning of "low." Thus, it is unclear what constitutes “low-dielectric” resin composition.
As to Claims 3 and 10: They recite, among other things, “bisphenol A type epoxy resin”, “a hydrogenated bisphenol A type epoxy resin” and “bisphenol F-type epoxy resin” (Emphasis added). Thus, it is not clear what is meant by the term “type” because the present specification merely repeats what is in the claims without further explanation, definition or much guidance from the instant specification (see, for example, paragraphs [0009] and [0017] of applicants’ published application, i.e., US PG PUB 2025/0163261).
As to Claim 11: As recited, it is not clear whether “a resin” is referring to the epoxy resin recited in claim 1, on which it depends from, or different/additional resin.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
Accordingly, the scope of these claims is deemed indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1-8 and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 10-11 of co-pending U.S. Application No. 18/417,073 (hereinafter referred to as “US Appl. ‘073”; corresponding to US PG PUB 2025/0163260) in view of Takahashi et al. (US 2005/0079436).
The claims of US Appl. ’073 and the present application are directed to a low-dielectric resin composition comprising an epoxy resin, an active ester compound, and an inorganic filler material, wherein, based on the total weight of the low-dielectric resin composition being 100 wt.%, a content of the epoxy resin ranges from 5-30 wt.%, a content of the active ester compound ranges from 5-40 wt.%, and a content of the inorganic filler material is not less than 40 wt.%. The claims of the present application and US Appl. ‘073 also recite that the inorganic filler material is spherical silica particles, wherein a surface of each of these particles is modified with at least one of an epoxy group, an acrylic group and a vinyl group, and a silica purity in each of the spherical silica particles is not less than 95 wt.%, wherein the average particle diameter D50 of the particles ranges from 0.05-5 micrometers, and a specific surface area of each of the spherical silica particles ranges from 1-10 m2/g, and the composition further comprises a siloxane coupling agent, an accelerant, wherein the content of the siloxane coupling agent ranges from 0.01-5 wt.% and a content of the accelerant ranges from 0.01-5 wt.%. The claims of the US Appl. ‘073 and the present application further recite that the accelerant is an amine based hardening accelerant, and the epoxy resin is a mixed resin including a naphthol-novolac epoxy resin and a bisphenol F-type epoxy resin and are mixed with each other in a weight ratio of 1:2 to 2:1, wherein the active ester compound contains a naphthalene structure. Moreover, the claims of US Appl. ‘073 and the present application recite that the resin made of the low-dielectric resin composition has a dielectric constant (Dk) ranging from 3-3.3 and a dissipation factor (Df) not greater than 0.0045 under a signal of 10 GHz, which are encompassed by the presently claimed Dk of 2.5-40 and the presently claimed Df of not greater than 0.0008, and inclusive of the presently claimed Dk of 2.8-3.6 and encompassed by the presently claimed Df of not greater than 0.004.
However, the claims of US Appl. ‘073 do not specifically mention the addition of a hardening agent including those recited in present claims 1 and 3. They also do not specifically mention the particular amount of the hardening agent and its ratio to the active ester compound as required by the claims of the present application.
Nevertheless, Takahashi et al. disclose the addition of 0.5-10 parts by weight of a hardening agent including a bisphenol A type epoxy resin to provide a dielectric composition with desired hardening properties (Paragraphs [0001] and [0032]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the hardening agent including a bisphenol A type epoxy resin and the active ester compound, corresponding to the presently claimed ratio, in the composition of US Appl. ‘073, with a reasonable expectation of successfully providing the same with desired hardening properties as suggested by Takahashi et al.
This is a provisional nonstatutory double patenting rejection.
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.
4. Claims 1-2, 4, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2023/2039061 (hereinafter referred to as “WO ‘906”) in view of Qiang et al. (US 2011/0048776).
As to Claims 1-2, 4, and 7-12: WO ‘906 discloses a resin composition capable of obtaining a cured products of circuit boards and semiconductor chip packages (Pages 2 and 3), comprising an epoxy resin in a range of 5-30% by mass, a combination of two or more curing agents including active ester curing agent comprising a naphthalene structure (corresponding to the claimed active ester compound) and other curing agents (corresponding to the claimed hardening agent), and an inorganic filler such as spherical silica particles in an amount of 10-90% by mass (which overlaps with the claimed content of inorganic filler material being not less than 40 wt.%) (Pages 3 and 8-14). WO ‘906 also teaches that the epoxy resin includes a mixed resin such as naphthol-novolac epoxy resin and a bisphenol F-type epoxy resin in a weight ratio of 1:10-10:1 (Pages 7 and 8). WO ‘906 further teaches adding additional siloxane coupling agent in an amount of 0.2-5% by mass and a curing accelerator (corresponding to the claimed accelerant) including amine-based and imidazole compounds, e.g., 1-methyl imidazole, in an amount of 0.05-1 mass% (Pages 10 and 14-15).
However, WO ‘906 does not specifically mention the claimed amounts of active ester compound and hardening agent, and their corresponding ratios as required by claims 1 and 2.
Nevertheless, WO ‘906 do disclose using a combination of two or more curing agents including active ester curing agent comprises a naphthalene structure (corresponding to the claimed active ester compound) and other curing agents (hardening agent) in an amount of 1-30 mass % for the purposes of providing the resin composition with desired curing properties (Pages 11-14).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the active ester curing agent comprising a naphthalene structure (active ester compound) and other curing agents (hardening agent), corresponding to the claimed ratio, for the purposes of providing the resin composition with desired curing properties as suggested by WO ‘906.
Additionally, WO ‘906 does not specify its resin composition as being low dielectric and made of a resin having a particular dielectric constant (Dk) and dissipation factor (Df) as required by the claims. However, Qiang et al. disclose it is advantageous to use resin compositions that are low-dielectric and prepared from resins having a dielectric constant (Dk) of below 4.0 (encompassed by the claimed Dk of 2.5-4.0 and overlaps with the claimed Dk of 2.8-3.6) and a dissipation factor (Df) of below 0.005 (encompassed by claimed Df of not greater than 0.008 and inclusive of the claimed Df of not greater than 0.004) for use in in the manufacture of printed circuit boards and provide them with desired thermal stability, good processability, and good moisture resistant properties (Paragraphs [0009]-[00010] and [0017]). Thus, it would have been obvious to one of ordinary skill in the art to use resin composition that is low dielectric and made of a resin having the claimed Dk and Df for the purposes of obtaining printed circuit boards with desired thermal stability, good processability, and good moisture resistant properties as taught by Qiang et al.
5. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2023/203906 (hereinafter referred to as “WO ‘906”) in view of Qiang et al. (US 2011/0048776) as applied to claims 1-2, 4, and 7-12 above, and further in view of You (US 2015/0353722).
The disclosures with respect to WO ‘906 and Qiang et al. in paragraph 4 are incorporated here by reference. WO ‘906 further teaches that the inorganic filler includes spherical silica particles surface treated with a surface-treating agent including an epoxy group, i.e., long chain epoxy type silane coupling agent, and have an average particle size of 0.01 µm or more, which overlaps with the claimed average particle diameter (D50) of 0.05-5 micrometers. and a specific surface area of 0.1 m2/g or more, which overlaps with the claimed specific surface area of 1-10 m2/g (Pages 9-11).
However, WO ‘906 does not specify the silica purity of the spherical silica particles as required by the claims.
Nevertheless, You discloses the use of spherical silica particles having a purity of more than 99 wt.% (i.e., encompassed by the claimed purity of not less than 95 wt.%) for the purposes of providing low dielectric resin composition with desired high thermal resistant properties (Paragraphs [0005] and [0064]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the spherical silica particles having the claimed purity taught by You in the composition suggested by WO ‘906 and Qiang et al., with a reasonable expectation of successfully obtaining desired high thermal resistant properties.
6. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2023/203906 (hereinafter referred to as “WO ‘906”) in view of Qiang et al. (US 2011/0048776) as applied to claims 1-2, 4, and 7-12 above, and further in view of Takahashi et al. (US 2005/0079436).
The disclosures with respect to WO ‘906 and Qiang et al. in paragraph 4 are incorporated here by reference. However, they do not specify its curing (hardening) agent as including bisphenol A type epoxy resin (BPA) as recited in claim 3.
Nevertheless, Takahashi et al. disclose the addition of a hardening agent including a bisphenol A type epoxy resin to provide a dielectric composition with desired hardening properties (Paragraphs [0001] and [0032]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed hardening agent including a bisphenol A type epoxy resin taught by Takahashi et al. in the resin composition suggested by WO ‘906 and Qiang et al., with a reasonable expectation of successfully providing the same with desired hardening properties.
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 11/26/2024.
Prosecution Insights