DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group 1, claims 1-14 filed on 7/30/2026 is acknowledged. The traversal is on the ground(s) that the inventions as claimed overlap in scope in that all claims require the resin composition of claim 1, the argument is not persuasive because based on applicant’s rationale, all claims in organic field overlap in scope because they all contain carbon atom, which is apparently incorrect. Additionally, the MPEP does not require the examiner to provide an example to support the determination that the resin composition of claim 1 is useful to make something other than the claimed prepreg, laminate and printed circuit board.
With regard to applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
Restriction for examination purposes as indicated is proper because all these inventions listed in last action are independent or distinct for the reasons given below and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);(d) the prior art applicable to one invention would not likely be applicable to another invention;(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
In this particular case, the prior art applicable to one invention would not likely be applicable to non-elected invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/30/2026.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (US 2021/0355259) in view of Kawashima et al (US 2024/0026069).
Liu teaches a low dielectric resin composition for metal foil adhesive comprising a compound of
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, a vinyl containing elastomer, and a polyphenylene ether resin having an unsaturated functional group [0002, 0009-0016, 0119, 0080-0082, 0062, 0048, 0085].
Liu does not teach the claimed (B) compound.
Kawashima teaches a polymer has a low dielectric constant and has a better adhesiveness to a copper foil than polyphenylene ether resin [0010-0012, 0026, 0177]. The polymer includes
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[0270-0277, 0126-0127]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to replace the polyphenylene ether resin of Liu with the polymer of Kawashima to further improve adhesiveness to a copper foil.
Claim 9: the compound of Liu and the polymer of Kawashima have different dielectric constant, loss tangent, heat resistance, chemical resistance and adhesiveness. Therefore the content of each is a result effective variable and it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the content of each through routine experimentation to balance among those properties. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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