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 .
DETAILED ACTION
Election/Restrictions
The applicant has elected Species I (claims 1-7) with traverse. Applicant’s election of Group I in the reply is acknowledged. The applicant argued the search of non- elected Groups and Species would be the same, implying no undue burden. 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, at least one of (a)-(e) applies.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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 of this title, 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) 1-7 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Arai et al. (WO/2021/112088, US 20230023889 as English equivalent, listed on IDS) in view of Uera et al. (US 20090312519) and in further view of Sato et al. (US 20210269595, listed on IDS).
As to claims 1-7, Arai (abs., claims, examples, Tables) discloses a resin composition for PCB copper clad laminates (98) having excellent low dielectric properties (15, 27, 40) comprising 0-70 wt% (overlapping with the range of claim 1) of a copolymer having Mn 5k-100k (31, 41, overlapping with the range of claim 6), 1-500 (or 1-200 or 10-100) parts of polyphenylene ether per 100 parts of said copolymer (45, 49), and 1-30 parts of a styrene-butadiene block copolymer (SBS) per 100 parts of said copolymer (48). The composition may further comprise bismaleimides (73). The copolymer comprises ethylene, styrene, and divinylbenzene.
Arai is/are silent on the claimed polyphenylene ether modified by bismaleimide.
In the same area of endeavor of procuring copper clad laminates (18, 2-5), Uera (abs., claims, examples, Tables) discloses a bismaleimide having high heat resistance, low dielectric properties, and excellent solvent solubility that embraces the structure of claim 7:
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458
674
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402
574
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289
664
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, wherein the claimed and disclosed repeating units overlap.
Arai is/are silent on acenaphthylene of claim 1 and the molar ratio of claim 5.
In the same area of endeavor of procuring copper clad laminates (1), Sato (abs., claims, examples, Tables) discloses a composition having heat resistance, low dielectric properties even after water absorption treatment (8) comprises 5-50 parts of acenaphthylene per 100 parts of an olefin-based copolymer A (88-92) to balance low dielectric loss and heat resistance. The copolymer meets the claimed molar ratio (overlapping) and the disclosed repeating units would yield a Mn overlapping with the Mn of claim 6:
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525
659
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236
222
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200
400
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375
656
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Therefore, as to claims 1-7, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Arai and replaced the olefin copolymer with Sato’s, replaced polyphenylene oxide with the bismaleimide modified polyphenylene ether of Uera, and added acenaphthylene in view of Sato, because the resultant process would yield improved heat resistance, and low dielectric properties even after water absorption treatment, and solvent solubility. The resultant ranges would overlap with the claimed ones. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. 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). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Arai, Uera, and Sato since they disclose all applicants' components, values and methods of making.
The references are silent on the peeling strength of claim 4. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. peeling strength, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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