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 .
Response to New Claim Amendment filed 09/03/2026
2. Claim 1 was amended to include limitations “wherein a ratio of the content of the active ester compound relative to the content of the hardening agent ranges from 8 to 17.44” and “wherein the hardening agent is at least one of a bisphenol A epoxy resin and a hydrogenated bisphenol A epoxy resin” which are supported by cancelled original claims 2 and 3 language.
3. In response to the 112(b) rejection set forth in paragraph 2 of the previous Office action mailed 06/10/2026, the applicants amended claims 1 and 4-12 to remove the previously claimed term “low-dielectric” to provide the same with clarity. Thus, the 112(b) rejection of record is no longer applicable and thus, withdrawn. However, this amendment (i.e., deletion of the previously claimed term “low-dielectric”) introduces new matter in violation of 35 USC 112(a) for the reasons provided below.
The applicants also amended 10 and 11 to provide the same with clarity, and cancelled claim 3 in response to the 112(b) rejection set forth in paragraph 2 of the previous Office action mailed 06/10/2026. Written descriptive support for this amendment is found at paragraphs [0048]-[0050] and [0070] of the specification as originally filed.
Accordingly, this action is properly made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 1 and 4-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly amended claims 1 and 4-12 now recite “A resin composition” and “The resin composition”, respectively (i.e., deletion of the previously claimed “low-dielectric”). This new limitation fails to satisfy the written description requirement of 35 USC 112(a), since there is no written descriptive support for this amendment in the application as originally filed, see MPEP § 2163. While throughout the specification originally filed shows written descriptive support for “a low-dielectric resin composition” (see, for example, page 6 of the original specification), there is no written descriptive support for the more broadly recited “a resin composition” or “the resin composition” (which includes non-low-dielectric resin compositions) as recited in the newly amended claims.
Accordingly, it is deemed that this new limitation introduces new matter in violation of 35 USC 112(a).
Response to Applicants’ Arguments in their Remarks filed 09/03/2026
5. In response to the obviousness-type double patenting rejection based on the claims of US Application no. 18/417,073 (corresponding to US PG PUB 2025/0163260) in view of Takahashi et al. (US 2005/0079436) set forth in paragraph 3 of the previous Office action mailed 06/10/2026 is no longer applicable and thus, withdrawn because the applicants submitted a terminal disclaimer on 09/03/2026.
See also top of page 8 of Applicants’ Remarks.
6. Upon further consideration in light of applicants’ arguments provided at pages 8-11 of their Remarks, the 103 rejections set forth in paragraphs 4-6 of the Office action mailed 06/10/2026 are no longer applicable and thus, withdrawn.
Correspondence
7. 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.
8. 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.
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, 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
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