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
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 2-3 contain the trademark/trade name DCPD-BMI, KI-50P, KI-70, LDM-03-07, LDM-02, and 1,2-SBS, in line 2 of these claims. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe bismaleimide resins and liquid rubbers and, accordingly, the identification/description is indefinite.
Claim 10 recites the limitation "the substrate is a copper foil substrate" in lines 1-2. However, claim 6, to which claim 10 refers, recites “a substrate formed by the resin composition” in line 2. There is insufficient antecedent basis for the claim 10 limitation, since the only prior mention of a substrate is one derived from a polymeric composition, not a metallic substrate.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu et al. (US Patent Application 2021/0171770 A1, published 10 Jun. 2021, hereinafter Hu) and evidence provided by Total Energies (“Ricon 100”, published 13 May 2022, hereinafter Total Energies).
Regarding claim 1, Hu teaches a resin composition comprising 10-70 parts bismaleimide resin (Abstract and paragraphs 0008 and 0014). Hu teaches example resin compositions E6, E7, and E17, the formulations of which are tabulated in the table below (Tables 1 and 3). These three examples have the claimed amount of bismaleimide resin (32.3-39.9%), liquid rubber (8.1-9.1%), and filler (32.3-36.3%).
E6
E7
E17
E6
E7
E17
Vinyl silane
30
30
10
18.1%
17.1%
5.4%
Maleimide resin
60
70
60
36.3%
39.9%
32.3%
PPE
40
21.6%
Ricon 100 liquid rubber
15
15
15
9.1%
8.5%
8.1%
Filler
60
60
60
36.3%
34.2%
32.3%
PCP Peroxide
0.5
0.5
0.5
0.3%
0.3%
0.3%
Total
165.5
175.5
185.5
100%
100%
100%
As evidenced by Total Energies, Ricon 100 is a styrene-butadiene copolymer and is a liquid at room temperature (page 2, Chemical name and page 3, Section 9.1, Physical state).
Claim 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meng et al. (WO 2021/134992 A1, published 08 Jul. 2021, hereinafter Meng) and evidence provided by Nisso (“Base Resins,” accessed 22 Aug. 2025, hereinafter Nisso) and SpecialChem (“Ricon 257,” accessed 22 Aug. 2025, hereinafter SpecialChem).
Regarding claims 1 and 4-5, Meng teaches a modified maleimide compound comprising bismaleimide resin (Abstract and paragraph 0010). Meng teaches example resin compositions Ex.8, Ex.9, and Ex.10, the formulations of which are tabulated in the table below (Table 3). These three examples have the claimed amount of bismaleimide resin (34.6%), liquid rubber (4-6%), filler (23.7%), flame retardant (12.8%), coupling agent (1% silane), and catalyst (0.2% peroxide).
Ex.8
Ex. 9
Ex. 10
Ex.8
Ex. 9
Ex. 10
Modified bismaleimide resin
15
15
15
14.8%
14.8%
14.8%
BMI-70 Bismaleimide resin
20
20
20
19.8%
19.8%
19.8%
OPE-St PPE
22
20
20
21.7%
19.8%
19.8%
B-1000 Polybutadiene
4
2
6
4.0%
2.0%
5.9%
Ricon 257 Butadiene-styrene-divinylbenzene terpolymer
0
4
0
0.0%
4.0%
0.0%
A1536 SEBS resin
1
1
1
1.0%
1.0%
1.0%
NQ 1025J Silica
25
25
25
24.7%
24.7%
24.7%
Bt-93W Flame retardant
0
13
13
0.0%
12.8%
12.8%
OP 935 Flame retardant
13
0
0
12.8%
0.0%
0.0%
DCP Peroxide
0.2
0.2
0.2
0.2%
0.2%
0.2%
KBM-602 Silane
1
1
1
1.0%
1.0%
1.0%
Total
101.2
101.2
101.2
100%
100%
100%
Total Bismaleimide resin
34.6%
34.6%
34.6%
As evidenced by Nisso, B-1000 is a homopolymer of butadiene and is a liquid at room temperature (page 1, Properties and page 2, Product list for B Series).
As evidenced by SpecialChem, Ricon 257 is a polybutadiene-styrene-divinylbenzene terpolymer that is a liquid (page 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (US Patent Application 2021/0171770 A1, published 10 Jun. 2021, hereinafter Hu).
Regarding claims 6-8 and 10, Hu teaches the elements of claim 1, and Hu teaches using his resin composition between two copper foils (paragraph 0088), and the glass transition temperature of his resin composition is greater than 235°C (paragraph 0093). Hu teaches articles made from his resin composition have dissipation factors at 10 GHz of 0.048 or less (paragraph 0144). Hu teaches a printed circuit board made from his resin composition (claim 14). Hu teaches his resin comprises flame retardant (paragraph 0077).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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 of ordinary skill in the art to have selected values of the glass transition temperature and dissipation factor from the overlapping portions of the ranges taught by Hu because overlapping ranges have been held to be prima facie obviousness.
Regarding claim 9, Hu teaches the elements of claim 6.
Hu does not disclose the dielectric constant of his resin composition. However, given the cured resin composition of Hu has the same polymeric and other components and in the same relative amounts, within the overlapping ranges, as the claimed invention, the cured resin composition of Hu would inherently have the same dielectric constant as the claimed invention, and therefore, would fall within the claimed range for dielectric constant.
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Meng et al. (WO 2021/134992 A1, published 08 Jul. 2021, hereinafter Meng).
Regarding claims 6-10, Meng teaches the elements of claim 1, and Meng teaches a circuit board (electronic component) formed from a copper foil-clad laminate comprising his resin composition (claims 7, 9, and 10 and paragraph 0090). Meng teaches a laminate prepared with his resin composition has a dielectric constant of less than 3.8 at 1 GHz, a dielectric loss factor of less than 0.002 at 1 GHz, and a glass transition temperature of greater than 190°C (paragraph 0114).
It is the examiner’s position that the dielectric constant and dielectric loss factor of Meng’s laminate would have similar values at 10 GHz.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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 of ordinary skill in the art to have selected values of the glass transition temperature, dissipation factor, and dielectric constant from the overlapping portions of the ranges taught by Hu because overlapping ranges have been held to be prima facie obviousness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Abe et al. (US Patent Application 2019/0281697 A1, published 12 Sep. 2019) teaches a resin composition comprising bismaleimide resin, filler, rubber, and an accelerator. Fujimoto et al. (US Patent Application 2010/0129676 A1, published 27 May 2010) teaches a resin composition comprising bismaleimide resin, filler, rubber, and a crosslinking agent. Hsieh (US Patent Application 2015/0353730 A1, published 10 Dec. 2015) teaches a resin composition comprising maleimide resin, flame retardant, rubber, and silane. Hwang et al. (US Patent Application 2021/0033462 A1, published 04 Feb. 2021) teaches a resin composition comprising bismaleimide resin, filler, and liquid rubber. Koga and Takano (US Patent Application 2020/0247954 A1, published 06 Aug. 2020) teaches a resin composition comprising bismaleimide resin, filler, and catalyst. Mizuno et al. (US Patent Application 2010/0233495 A1, published 16 Sep. 2010) teaches a resin composition comprising bismaleimide resin, PPE, and butadiene polymer. Muramoto et al. (JP H04/55457 A, published 24 Feb. 1992) teaches a resin composition comprising bismaleimide resin, liquid rubber, peroxide, filler, coupling agent, and flame retardant. Sethumadhavan et al. (US Patent Application 2016/0113113 A1, published 21 Apr. 2016) teaches a resin composition comprising bismaleimide resin, filler, rubber, and a catalyst. Tarkin-Tas et al. (US Patent Application 2019/0345324 A1, published 14 Nov. 2019) teaches a resin composition comprising bismaleimide resin, filler, catalyst, silane, and flame retardant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M-F 8:00 am to 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at telephone number (571)272-9603. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787