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 § 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 (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 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.
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 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 nonobviousness.
Claims 1-3, 7-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (CN 117069877 A, priority 10 May 2022, published 17 Nov. 2023, hereinafter Chang) in view of Wang et al. (US Patent Application 2024/0182703 A1, priority 21 Nov. 2022, published 06 Jun. 2024, hereinafter Wang) and further in view of Kawahara et al. (US Patent Application 2007/0249792 A1, published 25 Oct. 2007, hereinafter Kawahara) and evidence provided by Borisenko et al. (“The influence of molecular weight distribution of solution-polymerised styrene butadiene rubber on the properties of rubber mixes and vulcanisates,“ Kauchuk I Rezina, No. 6, pp. 4-7, published 2015, hereinafter Borisenko).
Regarding claims 1-3 and 7-12, Chang teaches a hydrocarbon resin main chain including repeating units (Abstract). Chang teaches some of the dangling double bonds are converted to benzocyclobutene groups (with R1 being a vinylidene group), with the ratio of dangling double bonds to benzocyclobutene groups is 1:0.05-1 (paragraph 0073-0074 and 0111). The dangling double bonds that are not converted to benzocyclobutene represent the chemical structure of formula II with R2 being a vinyl group. Chang teaches his hydrocarbon resin contains the monomer represented by formula IIIA of claim 7 (paragraph 0112-0115).
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Chang teaches the inclusion of hydrogenated styrene-butadiene rubber as a toughening agent (paragraph 0161). Chang teaches the inclusion of a thermal initiator, an inorganic filler, and a flame retardant (paragraph 0152).
Chang teaches the polymer structure shown in paragraph 0115 in which x, z, and w range from 0 to 500, and y is the range of 2 to 2000 (paragraph 0114). As presented above, Chang teaches the ratio of dangling double bonds (vinyl groups) to benzocyclobutene groups is 1:0.05-1 (paragraph 0111).
Thus, given that the molecular weights of the butene (X), vinyl (Y), and the benzocyclobutene groups (some of the Y groups) are 54, 54, and 156, respectively, the number average molecular weight of the copolymer taught by Chang is 108 (0*54+2*54*(1-0.05)+156*0.05) to 213, 000 (500*54+2000*(54*(1-0.5)+156*0.5)). Also, the molar percentage of formula 1, formula 2, and formula IIIA structures in his copolymer are 0.02 (2*0.05/(2+500)*100) to 50 mole% (2000*0.5/(2000)*100), 0.02 (2*0.5/(2+500)*100) to 95 mole% (2000*0.95/(2000)*100), and 0 to 99.6 mole % (500/(2+500)*100), respectively.
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 relative amounts of repeat unit groups and the number average molecular weight of his hydrocarbon resin from the overlapping portions of the ranges taught by Chang because overlapping ranges have been held to be prima facie obviousness.
Chang does not disclose the relative amounts of his hydrocarbon resin and the hydrogenated styrene-butadiene rubber nor the number average molecular weight of the hydrogenated styrene-butadiene rubber.
Wang teaches a resin composition comprising a blend of 100 parts hydrogenated styrene-butadiene copolymer and 20 to 150 parts of a copolymer comprising a benzocyclobutene group (Abstract, paragraphs 0012 and 0047 and Formula (2-1)).
Given that Chang and Wang are drawn to blends of hydrogenated styrene-butadiene rubber and copolymers incorporating a benzocyclobutene group for use as an insulating material in printed circuit boards, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the relative amounts of the two copolymers as taught by Wang in the modified resin taught by Chang. Since Chang and Wang are both drawn to blends of hydrogenated styrene-butadiene rubber and copolymers incorporating a benzocyclobutene group for use as an insulating material in printed circuit boards, one of ordinary skill in the art would have a reasonable expectation of success in incorporate the relative amounts of the two copolymers as taught by Wang in the modified resin taught by Chang. Further, Wang teaches his blends with these relative amounts of these two copolymers result in prepregs, laminates, and circuit boards with improved multi-layer board heat resistance, improved dissipation factor aging rate, and improved temperature coefficients for both dielectric constant and dissipation factor (Abstract).
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 relative amounts of benzocyclobutene-based copolymer and hydrogenated copolymer from the overlapping portions of the ranges taught by Wang because overlapping ranges have been held to be prima facie obviousness.
Kawahara teaches a blend of an olefin-based polymer and a styrene-based polymer, including styrene-based polymers containing butadiene (Abstract and paragraph 0190). Kawahara teaches the weight average molecular weight is preferably 5,000 to 1,000,000 (paragraph 0190).
Given that Chang and Kawahara are drawn to blends of olefin-based copolymers and styrene-based copolymers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the molecular weight as taught by Kawahara for the hydrogenated styrene-butadiene in the modified resin taught by Chang in view of Wang. Since Chang and Kawahara are drawn to blends of olefin-based copolymers and styrene-based copolymers, one of ordinary skill in the art would have a reasonable expectation of success in setting the molecular weight as taught by Kawahara for the hydrogenated styrene-butadiene copolymer in the modified resin taught by Chang in view of Wang. Further, Kawahara teaches this range of weight average molecular weight results in a good balance between moldability and characteristics of the final product (paragraph 0190).
As evidenced by Borisenko, the range of polydispersity for solution polymerized styrene-butadiene copolymers is 1.8 to 3.2 (Abstract and Table 1).
Thus, the weight average molecular weight range taught by Kawahara corresponds to number average molecular weights of about 1,600 (5,000/3.2) to about 560,000 (1,000,000/1.8).
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 number average molecular weight from the overlapping portion of the range taught by Kawahara because overlapping ranges have been held to be prima facie obviousness.
Regarding claims 13-15 and 17-20, Chang in view of Wang and further in view of Kawahara teaches the elements of claim 1, and Chang teaches his modified resin can be used as a plate material (insulating film) along with a conductive layer, and in some embodiments a glass cloth, to form a prepreg, a copper clad laminate, or a circuit board (paragraphs 0048-0049).
It is the examiner’s position that given Chang teaches a plate material of his polymer with a conductive layer, and Chang also teaches the use of this plate material in a copper clad laminate, Chang teaches a plate material containing his polymer laminated (coated) to a copper layer (foil) in order to form his copper-clad laminate.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (CN 117069877 A, priority 10 May 2022, published 17 Nov. 2023, hereinafter Chang) in view of Wang et al. (US Patent Application 2024/0182703 A1, priority 21 Nov. 2022, published 06 Jun. 2024, hereinafter Wang) and further in view of Kawahara et al. (US Patent Application 2007/0249792 A1, published 25 Oct. 2007, hereinafter Kawahara) and further in view of Moon et al. (“Development of thermoplastic prepreg by the solution-bond method,” J.Appl.Poly.Sci, Vol. 47, pp185-188, published 1993, hereinafter Moon) and evidence provided by Borisenko et al. (“The influence of molecular weight distribution of solution-polymerised styrene butadiene rubber on the properties of rubber mixes and vulcanisates,“ Kauchuk I Rezina, No. 6, pp. 4-7, published 2015, hereinafter Borisenko).
Regarding claim 16, Chang in view of Wang and further in view of Kawahara teaches the elements of claim 15, and Chang teaches his modified resin can be used as a plate material (insulating film) along with a conductive layer, and a support, for example a glass cloth, to form a prepreg.
Chang in view of Wang and further in view of Kawahara does not disclose impregnating the modified resin the support (reinforcing material) and drying.
Moon teaches the production of a thermoplastic prepreg by a solution-bond method by which the thermoplastic polymer is dissolved in a solvent, immersing a bundle of the fibers in a resin solution, and then evaporating the solvent by vacuum-drying (page 185, 1st column, 2nd last paragraph – 2nd column, 1st paragraph).
Given that Chang and Moon are drawn to forming prepregs from polymeric materials and fiber bundles, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the prepreg process taught by Moon to form the prepreg taught by Chang in view of Wang and further in view of Kawahara. Since Chang and Moon are both drawn to forming prepregs from polymeric materials and fiber bundles, one of ordinary skill in the art would have a reasonable expectation of success in using the prepreg process taught by Moon to form the prepreg taught by Chang in view of Wang and further in view of Kawahara. Further, Moon teaches his method is very effective for preparing thermoplastic prepregs (page 188, 2nd column, last paragraph).
Response to Arguments
Applicant's arguments filed 30 Jan. 2026 have been fully considered, but they were not persuasive. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claim 1 and cancelled claims 4-6.
Applicant argues that Chang’s benzocyclobutene resin does not contain the structure of Formula II and the inclusion of a hydrogenated hydrocarbon resin of claim 1.
However, as presented above, Chang clearly teaches a copolymer containing a repeat unit of Formula II (see Chang, paragraph 0074 [chemical diagram in original Chinese patent document], which is reproduced above) and the inclusion of a hydrogenated hydrocarbon resin (see Chang, paragraph 0161). As presented above, Chang does not disclose the relative amount of the hydrogenated hydrocarbon resin and nor its molecular weight. Both of these features are taught and motivated by secondary references.
Applicant argues that the amounts of Formula I and Formula II disclosed by Chang are much broader than those claimed.
However, the fact remains that there is still overlap. 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 amounts of Formula I and Formula II from the overlapping portions of the ranges taught by Chang because overlapping ranges have been held to be prima facie obviousness.
It would be obvious to use benzocyclobutene resin made from structural unit A of formula I and structural unit B of formula II, including in amounts as presently claimed, absent evidence to the contrary.
Applicant argues that their data shows unexpected results over the ranges cited in the prior art.
However, the data is not commensurate in scope with the claims. The data uses two types of specific hydrogenated hydrocarbon resins (hydrogenated SEBS and hydrogenated polybutadiene), while the present claims broadly encompass any hydrogenated hydrocarbon resin. The data uses hydrogenated hydrocarbon resins having number average molecular mass of 3,000-120,000 while the present claims encompass hydrogenated hydrocarbon resin having number average molecular mass of 20,000-200,000. There is no data at the upper and lower end of the claimed range of the number average molecular mass of the hydrogenated hydrocarbon resin. The data uses benzocyclobutene resin made from 5-80 mol% structural unit A, 12-72 mol% structural unit B, and 8-48 mol% structural unit C, while the present claims disclose benzocyclobutene resin made from greater than 5 mol% structural unit A and 15-90 mol% structural unit B. There is no data at the upper and lower end of either the claimed range of the structural unit A or the structural unit B. Further, the present claims do not require a structural unit C.
The present claims require 50-90 parts hydrogenated hydrocarbon resin and 10-50 parts benzocyclobutene resin. The Comparative Examples use a lower amount of benzocyclobutene (Comparative Example 1 - 5 parts) or a higher amount of benzocyclobutene (Comparative Example 2 - 80 parts). However, this is not commensurate in scope with the scope of the closest prior art which discloses 17 (20/120) – 60 wt.% (150/250) benzocyclobutene resin. Therefore, the comparative examples not only fall outside the scope of the present claims, but also outside the scope of the closest prior art. Further, Comparative Examples 3-4 each use a specific benzocyclobutene resin not disclosed by the closest prior art; therefore, are these compositions are also not commensurate in scope with the scope of the closest prior art.
Applicant argues that the amounts of Formula I and Formula II disclosed by Chang are much broader than those claimed but there is no data establishing the criticality of the amount of I and II.
However, the fact remains that there is still overlap. (insert overlapping ranges FP). It would be obvious to use benzocyclobutene resin made from structural unit A of formula I and structural unit B of formula II, including in amounts as presently claimed, absent evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hayes et al. (US Patent Application 2021/0198395 A1, published 01 Jul. 2021) teaches a copolymer of benzocyclobutene, a diene monomer, and an aromatic vinyl monomer (Abstract).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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 - 5:00 pm ET. 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787