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 § 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.
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. The claims recite, “A low-dielectric resin composition,” the term “low” in the claims is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 8 is 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. The claim recites, “bisphenol F-type epoxy resin,” the addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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 non-obviousness.
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 1-3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of TARKIN-TAS et al. (U.S. Publication No. 2019/0345324, hereinafter TARKIN-TAS).
Regarding claims 1 and 3, HAYASHI teaches a cured product having a low dielectric loss [0012] wherein the cured product is made of a resin composition a resin composition and multilayer substrate (Abstract; [0009, 0012, and 0026]) for a circuit [0125 and 0133]. The resin composition includes a thermosetting compound such as an epoxy-compound [0064-0067], curing agent including active ester compound [0072-0075], and inorganic filler [0091-0093]. Examples of active ester compound include HPC-8000-65T” and “EXB-9416-70BK” available from DIC Corporation [0078]. The curing agent is in the amount of 20% by weight or more and 70% by weight or less (which is within the claimed range of 5-40 wt%) .
The total amount of thermosetting compound and curing agent is 20% by weight or more to 95% or less [0071]. The inorganic filler includes silica particles with a spherical shape [0094 and 0097]. The content of inorganic filler is the amount of 25% by weight or more to 75% by weight or less [0100] (which is within the claimed range of not less than 40 wt%).
The resin composition may comprise an additional thermosetting resin including polyphenylene ether resin [0113 and 0116] in order to improve impact resistance and heat resistance [0114].
However, HAYASHI does not explicitly teach a low-dielectric resin composition comprising a content of the epoxy resin ranges from 5 wt% to 30 wt% and wherein the ratio of the content of the active ester compound relative to the content of the epoxy resin ranges from 0.5 to 2.
Given HAYASHI teaches the resin composition comprises the curing agent (i.e., active ester compound) is in the amount of 20% by weight or more and 70% by weight or less. The total amount of thermosetting compound (i.e., epoxy compound) and curing agent (i.e., active ester compound) is 20% by weight or more to 95% by weight or less [0071]. The amount of the components can be varied/adjusted for a desired property, for instance, when 20% by weight of curing agent is used and 20% by weight of epoxy resin is used which is a combined total of 40% which is within the total amount of thermosetting compound and curing agent of 20% by weight or more 95% by weight or less [0071]. Therefore, the ratio of active ester compound relative to the epoxy would be 1 (20% by weight of active ester compound/20% by weight of epoxy resin) which is within the claimed range of 0.5 to 2.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
However, HAYASHI does not teach the resin composition comprising a content of the modified polyphenylene ether resin ranging from 0.1 wt% to 20 wt%.
In the same field of endeavor for a circuit material (Title; Abstract), more specifically, printed circuit boards [0071], TARKIN-TAS teaches a thermoset composition having a low dielectric [0078] comprising a hydroxyl-terminated polyphenylene ether (Abstract; [0018]). Note: hydroxyl-terminated polyphenylene ether is a modified polyphenylene ether. The hydroxyl-terminated polyphenylene ether can be present in the amount of 2-80 wt% based on the total weight of the composition. More specifically, 5-40 wt% based on the total weight of the composition [0026]. The polyphenylene ether-containing composition of thermoset compositions for electronic applications. The composition has improved dielectric constant and dielectric loss, flame retardancy, and heat resistance [0003, 0010, 0087].
Given HAYASHI teaches the resin composition further comprises polyphenylene ether in order to improve properties in a cured product (i.e., circuit) [0113-0116], it would have been obvious to a person of ordinary skill in the art to have provided the hydroxyl-terminated polyphenylene ether of TARKIN-TAS with the resin composition of HAYASHI for the benefit of obtaining improved properties (i.e., dielectric constant and dielectric loss, flame retardancy, and heat resistance) in cured product (i.e., circuit) as taught by TARKIN-TAS [0003, 0010, and 0087].
Regarding claim 2, the combined disclosures of HAYASHI and TARKIN-TAS substantially teaches the present invention, as discussed in paragraphs 9-15 above. More specifically, HAYASHI teaches the resin composition comprises the curing agent (i.e., active ester compound) is in the amount of 20% by weight or more and 70% by weight or less. The total amount of thermosetting compound and curing agent is 20% by weight or more to 95% by weight or less [0071]. The amount of the components can be varied/adjusted for a desired property, for instance, when 20% by weight of curing agent is used and 20% by weight of epoxy resin is used which is a combined total of 40% which is within the total amount of thermosetting compound and curing agent of 20% by weight or more 95% by weight or less [0071]. Therefore, the ratio of active ester compound relative to the epoxy would be 1 (20% by weight of active ester compound/20% by weight of epoxy resin) which is within the claimed range of 0.65 to 1.8. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 10, the combined disclosure of HAYASHI and TARKIN-TAS substantially teaches the present invention, as discussed in paragraphs 9-15 above. More specifically, HAYASHI and TARKIN-TAS teaches a resin composition for a circuit with low dielectric properties.
However, the combined disclosures do no teach wherein a rein made of the low-dielectric resin composition has a dielectric constant (Dk) ranging from 3.0 to 3.3 and dissipation factor (Df) of not greater than 000045 under a signal of 10 GHz.
The examiner takes the position that the combined disclosures of HAYASHI and TARKIN-TAS teach the claimed components within the claimed range, therefore, the combined disclosure would intrinsically possess the claimed properties. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of TARKIN-TAS et al. (U.S. Publication No. 2019/0345324, hereinafter TARKIN-TAS) in further view of WO 2023/068078.
To further advance the prosecution of this invention, OKABE et al. (U.S. Publication No. 2024/0417545, hereinafter OKABE), which is an English equivalent of WO 2023/068078 will be used in the rejection.
Regarding claim 4, the combined disclosures of HAYASHI and TARKIN-TAS substantially teaches the present invention, as discussed in paragraphs 9-15 above. More specifically, HAYASHI teaches the resin composition comprising inorganic filler including silica particles with a spherical shape [0094 and 0097]. The average particle diameter of the inorganic filler is 5 µm or less [0095]. The inorganic filler is subjected to a surface treatment [0098] including methacrylsilane, acrylsilane, vinylsilane, and epoxysilane [0099].
However, HAYASHI does not teach the surface of each of the spherical silica particles has a silica purity in each of the spherical particles is not less than 95 wt% and a specific surface are of each of the spherical silica particles ranges from 1 m2/g to 10 m2/g.
In the same field of endeavor of resin composition, OKABE teaches the composition contains spherical silica particles and at least one resin selected from a thermoplastic resin and a thermosetting resin. The spherical silica particles have a specific surface are of 0.1-2.0 m2/g and an average particle diameter of 1-30 µm (Abstract; [0012-0016 and 0041]). The spherical silica particles are surface treated with a surface treatment agent [0017]. Examples of the surface treatment age include silane coupling agent having a vinyl group such as vinyl trimethoxysilane [0047]. OKABE teaches the production method of the spherical particles includes a step of preparing amorphous spherical silica particles which as a purity of 98% or more [0056-0057]. The resin composition filled with the spherical silica particle provides a lower dielectric dissipation factor (Abstract; [0010 and 0020]).
Given HAYASHI teaches the resin composition comprises surface treated spherical silica particles, it would have been obvious to a person of ordinary skill in the art to have substituted the spherical silica particle of HAYASHI for the spherical silica particles of OKABE for the benefit of providing a lower dielectric dissipation factor as taught by OKABE. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of TARKIN-TAS in view of HSIEH et al. (U.S. Publication No. 2014/0004324, hereinafter HSIEH) in further view of FORRAY et al. (U.S. Publication No. 2007/0176276, hereinafter FORRAY).
Regarding claims 5-7, the combined disclosures of HAYASHI and TARKIN-TAS substantially teaches the present invention, as discussed in paragraphs 9-15 above. More specifically, HAYASHI teaches the resin composition comprises curing accelerator including triethylamine and 4,4-dimethylaminopyridine [0101 and 0106] in the content of 0.01% by weight to 5.0% by weight or less [0108]. Note: the curing accelerator reads on an accelerant and 4,4-dimethylaminopyridine reads on an amine hardening accelerant as claimed.
The resin composition can comprise other ingredients for the improvement of impact resistance and heat resistance such as a coupling agent [0113-0114] and solvent [0061-0062 and 0109] which controls the viscosity of the resin composition and coating properties enhanced [0110].
However, HAYASHI does not teach the resin composition comprising siloxane coupling agent and a peroxide.
In the same field of endeavor of low dielectric resin composition used for circuit boards (Abstract; [0045]), HSIEH teaches a resin composition comprising a solvent including a peroxide [0041] in the amount of 0.2 wt% (Table 1) (which is within the claimed range of 0.005 wt% to 3 wt%) and coupling agent including siloxanes [0039-0040]. The solvent modifies the viscosity of the resin composition [0039].
Given HAYASHI teaches the resin composition (i.e., circuit)comprises a solvent which controls the viscosity of the resin composition [0110] and the resin composition comprises other ingredient including a silane coupling agent in order to improve properties [0113-0114], it would have been obvious to a person of ordinary skill in the art to have provided the solvent (i.e., peroxide) of HSIEH with the resin composition of HAYASHI for the benefit of modifying the viscosity of the resin composition as taught by HSIEH. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
However, the combined disclosures of HAYASHI, TARKIN-TAS, and HSIEH do not explicitly teach the resin composition comprising siloxane coupling agent ranges from 0.01 wt% to 5 wt%.
In the same field of endeavor of electronic elements (circuit) [0003-0005], FORRAY teaches assemblies comprises 0.1 wt% to about 4 wt% of at least one coupling agent based on the total weight of the composition [0026]. The coupling agent refers to a chemical species that are capable of bonding to a mineral surface and facilitates linkage of die-paste to the substrate to which is applied [0028]. An example of coupling agent include poly(methoxyvinylsiloxane) [0029].
Given HYASHI and HSIEH teaches the use of silane coupling agents (i.e., siloxane) in the same field of endeavor, it would have been obvious to a person of ordinary skill in the art to have provided 0.1 wt% to about 4 wt% of silane coupling agent of FORRAY with the compositions of HYASHI and HSIEH for its art recognized function (i.e., bonding to mineral surface and facilitates linkage to the substrate) as taught by FORRAY. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of TARKIN-TAS in further view of ABE et al. (U.S. Publication No. 2022/0276558, hereinafter ABE).
Regarding claim 8, the combined disclosures of HAYASHI and TARKIN-TAS substantially teaches the present invention, as discussed in paragraphs 9-15 above. More specifically, HAYASHI teaches the resin composition comprises a thermosetting compound including epoxy compound [0064 and 0065] and active ester compound [0072-0074] including a naphthalene skeleton active ester compound [0024 and 0173]. The epoxy compound may be used alone or more kinds thereof [0066] including bisphenol F epoxy compound [0067].
However, HAYASHI does not teach the epoxy resin is a mixed resin that includes a napthol-novolac epoxy resin and a bisphenol F epoxy resin are mixed with each other in a weight ratio of 1:2 to 2:1.
In the same field of endeavor of a multilayer printed wiring board (circuit), ABE teaches resin composition comprises (B) an epoxy resin (Abstract; [0123]) including bisphenol F [0124 and 0290] and naphthol novolak epoxy resin [0125 and 0291]. The combination of a bisphenol F epoxy resin and a novolak epoxy resin, the content ratio is the two epoxy resins is 1.0 to 4, more specifically, 1.5 to 3.0 [0131]. The epoxy resin (B) is used for insulation reliability, dielectric characteristics, heat resistance, and adhesiveness to plating copper [0130].
Given HAYASHI teaches the resin composition comprises two or more kinds of epoxy compounds including bisphenol F [0067], it would have been obvious to a person of ordinary skill in the art to have provided the combination of bisphenol F epoxy resin and a novolak epoxy resin of ABE with the resin composition of HAYASHI for the benefit of obtaining desired properties (i.e., insulation reliability, dielectric characteristics, heat resistance, and adhesiveness to plating copper) as taught by ABE. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 1-3, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of WO 2022/102756 (hereinafter, KAWAI).
Regarding claims 1, 3, and 9, HAYASHI teaches a cured product having a low dielectric loss [0012] wherein the cured product is made of a resin composition a resin composition and multilayer substrate (Abstract; [0009, 0012, and 0026]) for a circuit [0125 and 0133]. The resin composition includes a thermosetting compound such as an epoxy-compound [0064-0067], curing agent including active ester compound [0072-0075], and inorganic filler [0091-0093]. Examples of active ester compound include HPC-8000-65T” and “EXB-9416-70BK” available from DIC Corporation [0078]. The curing agent is in the amount of 20% by weight or more and 70% by weight or less (which is within the claimed range of 5-40 wt%) .
The total amount of thermosetting compound and curing agent is 20% by weight or more to 95% or less [0071]. The inorganic filler includes silica particles with a spherical shape [0094 and 0097]. The content of inorganic filler is the amount of 25% by weight or more to 75% by weight or less [0100] (which is within the claimed range of not less than 40 wt%).
The resin composition may comprise an additional thermosetting resin including polyphenylene ether resin [0113 and 0116] in order to improve impact resistance and heat resistance [0114].
However, HAYASHI does not explicitly teach a low-dielectric resin composition comprising a content of the epoxy resin ranges from 5 wt% to 30 wt% and wherein the ratio of the content of the active ester compound relative to the content of the epoxy resin ranges from 0.5 to 2.
Given HAYASHI teaches the resin composition comprises the curing agent (i.e., active ester compound) is in the amount of 20% by weight or more and 70% by weight or less. The total amount of thermosetting compound (i.e., epoxy compound) and curing agent (i.e., active ester compound) is 20% by weight or more to 95% by weight or less [0071]. The amount of the components can be varied/adjusted for a desired property, for instance, when 20% by weight of curing agent is used and 20% by weight of epoxy resin is used which is a combined total of 40% which is within the total amount of thermosetting compound and curing agent of 20% by weight or more 95% by weight or less [0071]. Therefore, the ratio of active ester compound relative to the epoxy would be 1 (20% by weight of active ester compound/20% by weight of epoxy resin) which is within the claimed range of 0.5 to 2.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
However, HAYASHI does not teach the resin composition comprising a content of the modified polyphenylene ether resin ranging from 0.1 wt% to 20 wt% and wherein the modified polyphenylene ether resin is selected from the group consisting of a vinyl benzyl-containing polyphenylene ether resin, a methacrylate-containing polyphenylene ether resin, a vinyl benzyl-containing bisphenol A polyphenylene ether resin, and a chain-extended vinyl-containing polyphenylene ether resin (claim 9).
In the same field of endeavor of a resin composition for the production of a cured product (i.e., circuit board (p. 20)) with a low dielectric loss tangent (Df) (p. 6), KAWAI teaches the composition contains (B) a modified polyphenylene ether resin having a vinyl phenyl group and/or (meth)acryloyl group (pp. 3 and 9). Examples of modified polyphenylene ether resin include “OPE-2St 1200” and “OPE-2St 2200” (vinyl benzyl modified polyphenylene ether resin) and “SA 9000-111” (methacryl-modified polyphenylene ether resin) (p. 10). The content of (B) is 0.1% by mass to 60% by mass by 100% by mass of the resin composition (p. 11). The resin composition provides reduced dielectric loss factor (Df) and a cured article (i.e., circuit) having a superior copper plating peel strength (Abstract).
Given HAYASHI teaches the resin composition further comprises polyphenylene ether in order to improve properties in a cured product (i.e., circuit) [0113-0116], it would have been obvious to a person of ordinary skill in the art to have provided the modified polyphenylene ether resin of KAWAI with the resin composition of HAYASHI for the benefit of obtaining desired properties (e.g., reduced dielectric loss factor and peel strength) as taught by KAWAI. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Regarding claim 2, the combined disclosures of HAYASHI and KAWAI substantially teaches the present invention, as discussed in paragraphs 38-44 above. More specifically, HAYASHI teaches the resin composition comprises the curing agent (i.e., active ester compound) is in the amount of 20% by weight or more and 70% by weight or less. The total amount of thermosetting compound and curing agent is 20% by weight or more to 95% by weight or less [0071]. When 20% by weight of curing agent is used and 20% by weight of epoxy resin is used which is a combined total of 40% which is within the total amount of thermosetting compound and curing agent of 20% by weight or more 95% by weight or less [0071]. Therefore, the ratio of active ester compound relative to the epoxy would be 1 (20% by weight of active ester compound/20% by weight of epoxy resin) which is within the claimed range of 0.65 to 1.8. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 10, the combined disclosure of HAYASHI and KAWAI substantially teaches the present invention, as discussed in paragraphs 38-43 above. More specifically, HAYASHI and KAWAI teaches a resin composition for a circuit with low dielectric properties.
However, the combined disclosures do no teach wherein a rein made of the low-dielectric resin composition has a dielectric constant (Dk) ranging from 3.0 to 3.3 and dissipation factor (Df) of not greater than 0.0045 under a signal of 10 GHz.
The examiner takes the position that the combined disclosures of HAYASHI and KAWAI teach the claimed components within the claimed range, therefore, the combined disclosure would intrinsically possess the claimed properties. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of WO 2022/102756 (hereinafter, KAWAI) in further view of WO 2023/068078.
To further advance the prosecution of this invention, OKABE et al. (U.S. Publication No. 2024/0417545, hereinafter OKABE), which is an English equivalent of WO 2023/068078 will be used in the rejection.
Regarding claim 4, the combined disclosures of HAYASHI and KAWAI substantially teaches the present invention, as discussed in paragraphs 38-43 above. More specifically, HAYASHI teaches the resin composition comprising inorganic filler including silica particles with a spherical shape [0094 and 0097]. The average particle diameter of the inorganic filler is 5 µm or less [0095]. The inorganic filler is subjected to a surface treatment [0098] including methacrylsilane, acrylsilane, vinylsilane, and epoxysilane [0099].
However, HAYASHI does not teach the surface of each of the spherical silica particles has a silica purity in each of the spherical particles is not less than 95 wt% and a specific surface are of each of the spherical silica particles ranges from 1 m2/g to 10 m2/g.
In the same field of endeavor of resin composition, OKABE teaches the composition contains spherical silica particles and at least one resin selected from a thermoplastic resin and a thermosetting resin. The spherical silica particles have a specific surface are of 0.1-2.0 m2/g and an average particle diameter of 1-30 µm (Abstract; [0012-0016 and 0041]). The spherical silica particles are surface treated with a surface treatment agent [0017]. Examples of the surface treatment age include silane coupling agent having a vinyl group such as vinyl trimethoxysilane [0047]. OKABE teaches the production method of the spherical particles includes a step of preparing amorphous spherical silica particles which as a purity of 98% or more [0056-0057]. The resin composition filled with the spherical silica particle provides a lower dielectric dissipation factor (Abstract; [0010 and 0020]).
Given HAYASHI teaches the resin composition comprises surface treated spherical silica particles, it would have been obvious to a person of ordinary skill in the art to have substituted the spherical silica particle of HAYASHI for the spherical silica particles of OKABE for the benefit of providing a lower dielectric dissipation factor as taught by OKABE. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of WO 2022/102756 (hereinafter, KAWAI) in view of HSIEH et al. (U.S. Publication No. 2014/0004324, hereinafter HSIEH) in further view of FORRAY et al. (U.S. Publication No. 2007/0176276, hereinafter FORRAY).
Regarding claims 5-7, the combined disclosures of HAYASHI and KAWAI substantially teaches the present invention, as discussed in paragraphs 38-43 above. More specifically, HAYASHI teaches the resin composition comprises curing accelerator including triethylamine and 4,4-dimethylaminopyridine [0101 and 0106] in the content of 0.01% by weight to 5.0% by weight or less [0108]. Note: the curing accelerator reads on an accelerant and 4,4-dimethylaminopyridine reads on an amine hardening accelerant as claimed.
The resin composition can comprise other ingredients for the improvement of impact resistance and heat resistance such as a coupling agent [0113-0114] and solvent [0061-0062 and 0109] which controls the viscosity of the resin composition and coating properties enhanced [0110].
However, HAYASHI does not teach the resin composition comprising siloxane coupling agent and a peroxide.
In the same field of endeavor of low dielectric resin composition used for circuit boards (Abstract; [0045]), HSIEH teaches a resin composition comprising a solvent including a peroxide [0041] in the amount of 0.2 wt% (Table 1) (which is within the claimed range of 0.005 wt% to 3 wt%) and coupling agent including siloxanes [0039-0040]. The solvent modifies the viscosity of the resin composition [0039].
Given HAYASHI teaches the resin composition (i.e., circuit) comprises a solvent which controls the viscosity of the resin composition [0110] and the resin composition comprises other ingredient including a silane coupling agent in order to improve properties [0113-0114], it would have been obvious to a person of ordinary skill in the art to have provided the solvent (i.e., peroxide) of HSIEH with the resin composition of HAYASHI for the benefit of modifying the viscosity of the resin composition as taught by HSIEH. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
However, the combined disclosures of HAYASHI, KAWAI, and HSIEH do not explicitly teach the resin composition comprising siloxane coupling agent ranges from 0.01 wt% to 5 wt%.
In the same field of endeavor of electronic elements (circuit) [0003-0005], FORRAY teaches assemblies comprises 0.1 wt% to about 4 wt% of at least one coupling agent based on the total weight of the composition [0026]. The coupling agent refers to a chemical species that are capable of bonding to a mineral surface and facilitates linkage of die-paste to the substrate to which is applied [0028]. An example of coupling agent include poly(methoxyvinylsiloxane) [0029].
Given HYASHI and HSIEH teaches the use of silane coupling agents (i.e., siloxane) in the same field of endeavor, it would have been obvious to a person of ordinary skill in the art to have provided 0.1 wt% to about 4 wt% of silane coupling agent of FORRAY with the compositions of HYASHI and HSIEH for its art recognized function (i.e., bonding to mineral surface and facilitates linkage to the substrate) as taught by FORRAY. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al. (U.S. Publication No. 2019/0031822, hereinafter HAYASHI) in view of WO 2022/102756 (hereinafter, KAWAI) in further view of ABE et al. (U.S. Publication No. 2022/0276558, hereinafter ABE).
Regarding claim 8, the combined disclosures of HAYASHI and KAWAI substantially teaches the present invention, as discussed in paragraphs 38-43 above. More specifically, HAYASHI teaches the resin composition comprises a thermosetting compound including epoxy compound [0064 and 0065] and active ester compound [0072-0074] including a naphthalene skeleton active ester compound [0024 and 0173]. The epoxy compound may be used alone or more kinds thereof [0066] including bisphenol F epoxy compound [0067].
However, HAYASHI does not teach the epoxy resin is a mixed resin that includes a napthol-novolac epoxy resin and a bisphenol F epoxy resin are mixed with each other in a weight ratio of 1:2 to 2:1.
In the same field of endeavor of a multilayer printed wiring board (circuit), ABE teaches resin composition comprises (B) an epoxy resin (Abstract; [0123]) including bisphenol F [0124 and 0290] and naphthol novolak epoxy resin [0125 and 0291]. The combination of a bisphenol F epoxy resin and a novolak epoxy resin, the content ratio is the two epoxy resins is 1.0 to 4, more specifically, 1.5 to 3.0 [0131]. The epoxy resin (B) is used for insulation reliability, dielectric characteristics, heat resistance, and adhesiveness to plating copper [0130].
Given HAYASHI teaches the resin composition comprises two or more kinds of epoxy compounds including bisphenol F [0067], it would have been obvious to a person of ordinary skill in the art to have provided the combination of bisphenol F epoxy resin and a novolak epoxy resin of ABE with the resin composition of HAYASHI for the benefit of obtaining desired properties (i.e., insulation reliability, dielectric characteristics, heat resistance, and adhesiveness to plating copper) as taught by ABE. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/136902A (hereinafter, HIRAMOTO).
Regarding claim 11, HIRAMOTO teaches die bonding film, adhesive sheet, semiconductor package and manufacturing thereof wherein the bonding film contains an epoxy resin (A), an active ester resin (B), and elastomer (C), and a filler (D) (Abstract; pp. 2-4). The content of component (A) is 5 to 40 mass% based on the total amount of the die bonding film (pp. 6-7) and the content of component (B) is 10 to 40% by mass based on the total amount of the die bonding film (p. 7). Component (C) include acrylic resin (pp. 7-8) in a content of 5 to 50 mass% based on the total amount of the die bonding film (p. 8). Component (D) includes inorganic filler in the content of 30 to 70 mass% (p. 8). The die bonding films have a low dielectric loss tangent (p. 2).
However, HIRAMOTO does not explicitly teach wherein a ratio of the content of active ester compound relative to the content of the epoxy resin ranges from 0.5 to 2.
Given HIRAMOTO teaches the content an active ester resin (B) is 10 to 40% by mass and the content of an epoxy resin (A) is 5 to 40 mass%, the amount of the components can be varied/adjusted for a desired property, for instance, when 20% by weight of active ester resin is used and 20% by weight of epoxy resin is used, the ratio of active ester compound relative to the epoxy would be 1 (20% by weight of active ester compound/20% by weight of epoxy resin) which is within the claimed range of 0.5 to 2. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
With regard to the claim limitations, “A low-dielectric resin composition,” HIRAMOTO teaches the die bonding films have a low dielectric loss tangent (p. 2) and the composition comprises epoxy resin and active ester resin which would render a resin composition.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/136902A (hereinafter, HIRAMOTO) in view of ZHANG et al. (U.S. Publication No. 2021/0139691, hereinafter ZHANG).
Regarding claim 12, HIRAMOTO substantially teaches the present invention, see paragraphs 48-51. More specifically, HIRAMOTO teaches component (C) including acrylic resins, polyphenylene ether resins, modified polyphenylene ether resins, and etc. which can be used in combination of two or more (p. 7).
However, HIRAMOTO does not teach wherein the acrylic resin is selected from the group consisting of a methacrylate-containing polyphenylene ether resin, a dioxolane diol diacrylate resin, and a tricyclodecane dimethanol diacrylate resin.
In the same field of endeavor of a resin composition for a resin film, a laminate or a printed circuit board (Abstract; [0002]), ZHANG teaches modified polyphenylene ether resin including methacrylate-containing polyphenylene ether resin [0010 and 0047-0049].
Given HIRAMOTO teaches the composition can comprise a combination of acrylic resin and modified polyphenylene ether resin (p. 7), it would have been obvious to a person of ordinary skill in the art to have provided the modified polyphenylene ether resin (i.e., methacrylate-containing polyphenylene ether resin) of ZHANG with the composition of HIRAMOTO for the benefit of its art recognized function. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8, and 10-12 of co-pending Application No. 18/411,396 in view of WO 2022/102756 (hereinafter, KAWAI).
The claims of U.S. Application No. ‘396 and the present application are directed to a low-dielectric resin composition comprising an epoxy resin, an active ester compound, a hardening agent, and inorganic filler material wherein, based on a total weight of the low-dielectric resin composition being 100 wt%, a content of the active ester compound ranges from 5 wt% to 40 wt%, a content of hardening agent ranges from 0.1 wt% to 20 wt%, and a content of the inorganic filler material is not less than 40 wt%; wherein a ratio of the content of the active ester compound relative to the content of the hardening agent ranges from 0.5 to 20.
However, the claims of U.S. Application No. ‘396 do not specifically teach a modified polyphenylene ether resin in a content ranging from 0.1 wt% to 20 wt%.
KAWAI teaches the composition contains (B) a modified polyphenylene ether resin having a vinyl phenyl group and/or (meth)acryloyl group (pp. 3 and 9). Examples of modified polyphenylene ether resin include “OPE-2St 1200” and “OPE-2St 2200” (vinyl benzyl modified polyphenylene ether resin) and “SA 9000-111” (methacryl-modified polyphenylene ether resin) (p. 10). The content of (B) is 0.1% by mass to 60% by mass by 100% by mass of the resin composition (p. 11). The resin composition provides reduced dielectric loss factor (Df) and a cured article (i.e., circuit) having a superior copper plating peel strength (Abstract).
It would have been obvious to a person of ordinary skill in the art to have provided the modified polyphenylene ether resin in the composition of U.S. Application No. ‘396 for the benefit of obtaining desired properties as taught by KAWAI.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
Prosecution Insights