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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 7/2/2026 is acknowledged. The traversal is on the ground(s) that the Office has not shown the requirements of MPEP 806 and failed to meet its burden for proper restriction. Specifically, the applicants indicated that search of all claims would not impose serious burden on the office, consequently the Office failed to meet the burden necessary in order to sustain the requirement for restriction.
This is not found persuasive because: MPEP 803 states following:
There are two criteria for a proper requirement for restriction between patentably distinct inventions:
(A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 - § 806.05(j)); and
(B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).
Examiner agrees that the claimed inventions can be viewed as related the criteria were justified in restriction requirement. Specifically, with respect to criteria A, the examiner stated that the claimed composition does not have to be utilized to make molded article, specifically a semiconducting article. Examiner indicated that boron nitride is not only utilized for its conducting properties but also for mechanical strength. The example disclosed in the restriction was advanced packaging and geological insulation. However, since this is response to a traversal BN also has low friction which finds its use in low friction and high temperature lubricity making it ideal for bearing, seals and sliding contacts of the industrial machinery. This use is very distinct from being molded article comprising cured part and metal part, specifically a semiconducting device. Several references teach making pre-preg. Wherein prepreg itself is not part of the semiconducting device.
With respect to criteria B, the examiner clearly indicated that the semiconducting device is classified in entirely different technology center, wherein claimed molded body itself can be utilized in number of ways. The field of search will be different depending on how exactly the molded part is utilized and what is details of the semiconducting device itself.
While applicants may not agree with reason set forth by the examiner, other than disagreeing with the examiner, the applicants have not shown any flaw in the examiner’s position. Consequently, the restriction is maintained. The requirement is still deemed proper and is therefore made FINAL.
The examiner acknowledges applicant’s request for rejoinder. Rejoinder will be evaluated at the time when claims are found to be allowable.
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 1-8 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.
With respect to claim 1, the thermosetting resin as claimed contains an epoxy resin having mass-average molecular weight of 5,000 or more and wherein weight per epoxide equivalent of resin components in the resin composition is in a range of 100-300.
These limitations are indefinite for following reasons: Instant specification discloses epoxy resin which has mass average molecular weight of 30,000 but its epoxide equivalent is 9000. Consequently, the same epoxy according as defined in the specification cannot have claimed WPE. At the same time applicants discloses an epoxy resin with molecular of 400 or less and WEP within claimed range. Consequently, the epoxies with claimed WEP do not have high molecular weight.
For the prompt prosecution of this application the examiner will treat instant claim 1 as comprising a mixture of two epoxy resins, one having molecular weight of at least 5,000 and second having claimed WEP. However, claim 1 still has to be amended to clearly and distinctly claim instant invention in accordance with 112 2nd paragraph statues.
All dependent claims inherit the deficiencies of instant claim 1.
Claim Objections
Claims 4, 5 and 7 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim. Claims 4, 5 and 7 recite “any one of claims 1-3” which is not proper in the US patent law. Multiply dependent claims may refer in the alternative to more than one preceding claim, but it must do so in the alternative for only and not cumulative. Term “any one of claims 1-3” is cumulative in form because it implies all three claims are being references together and is therefore improper. See MPEP § 608.01(n). Accordingly, in order to further advance the prosecution of the instant invention, claims 4, 5 and 7 will be treated as depending on independent claim 1.
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.
Claim Rejections - 35 USC § 102
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sawamura (JP 2019-119883) provided by the applicants.
With respect to claim 1, Sawamura discloses a composition comprising:
Mixture of epoxies wherein epoxy resin 1 has weight average molecular weight of 60,000, epoxy resin 3 which has molecular weight of 580 and WEP 270 g (see examples). Other epoxy resins are encompassed by term “comprising”
Inorganic fillers in Sawamura include spherical alumina (filler D) and aggregated boron nitride (filler E). BN is utilized in an amount of up to 80% by volume [0068]. Content of spherical alumina is 1-70% by volume [0068]. Consequently, the content of filler is at least 50% by volume based on the ratio in [0068], content of BN can be as high as 90 vol.% to 10 vol.% of alumina. The amounts are based on the entirety of the composition and sheet made therefrom.
With respect to the storage modulus, the property is that of a cured product, which is not the same as claimed resin composition comprising thermosetting resin. Cured sheet is chemically and structurally distinct from the claimed composition, consequently, the storage modulus of claim 1 is viewed as intended property. Therefore, instant composition is capable of forming a cured product having claimed property.
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).
With respect to claims 2 and 3, similarly to the property of claim 1 the properties of rigidity and storage modulus are reflective of a cured product not claimed composition. It should be noted that the properties of rigidity and storage modulus are also dependent on the type of article and its shape. Storage modulus reflects stiffness or elastic behavior under deformation. While rigidity reflects ability to resist deformation. Consequently, applicants’ claims are directed to any type of cured product and its properties. As such in similar fashion, composition of Sawamura is capable of forming cured product having claimed property, and claims are directed to intended 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).
With respect to claim 4, the spherical filler has particles having diameter of 0.5 microns or less and their content is less than 3% by volume [0066].
With respect to claim 5, disclosed combination of epoxy having molecular weight of 60,000 [0092] and second epoxy resin 3 has weight-average molecular weight of 580 with WEP of 270).
With respect to claim 6, Sawamura further discloses epoxy resin 4 that has molecular weight of 400 and it is a trifunctional epoxy (see second embodiment [0093].
With respect to claim 7, disclosed above spherical alumina is a metal oxide.
With respect to claim 8, the composition of Sawamura is cured into a sheet (see embodiment 2).
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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1. 4, 5, 6, 11 of copending Application No. 18/900,039 (‘039). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending application ‘039 is directed to a composition much broader in scope than the composition of the instant invention. Specifically, ‘039 discloses thermosetting composition comprising epoxy an agglomerated BN in an amount of 50% by volume and secondary inorganic filler in an amount of 7% by volume rendering BN to be at least 82% by volume based on the entire content of the filler.
Claim 4 of ‘039 discloses that the first epoxy polymer has a molecular weight of more than 10,000.
Claim 5 of “039 discloses that second epoxy polymer is polyfunctional and has molecular weight of 650 or less.
Claim 6 of ‘039 states that the polyfunctional epoxy has 3 or more epoxy groups per molecule.
Claim 11 of ‘039 is directed at cured product.
Consequently, above claims of ‘039 meet limitations of instant claims 1-3, 5-8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Art:
US 12,264,229, US 2018/0354793, US 2016/0009947 and US 6,831,031 are directed to either aggregated Boron nitride or epoxy compositions comprising agglomerated boron nitride. The epoxy polymers have bimodal molecular weight and claimed WEP.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 20, 2026
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