DETAILED ACTION
Summary
This is a non-final office action for application 18/546,385. The response to the restriction/election requirement dated 14 April 2026 is acknowledged.
Note that there is a change in the examiner assigned to the application since the previous office action.
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 without traverse of Group I, Claims 1-6 and 13-20 in the reply filed on 14 April 2026 is acknowledged. Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 April 2026.
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.
Claims 1, 5-6 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SHANGHAI TENGXUN (CN-108659203-A).
The TENGXUN (CN-108659203-A) reference is in the IDS dated 14 August 2023. A translation has been included in this office action.
Regarding Claim 1, TENGXUN teaches a maleic anhydride functionalized liquid polybutadiene modified epoxy resin (Abstract). TENGXUN characterizes the polybutadiene chain as being grafted to the modified epoxy resin (Abstract). Polybutadiene satisfies the requirement of a diene-based polymer.
Regarding Claim 5, TENGXUN teaches the invention of Claim 1. TENGXUN generally teaches a specific epoxy resin, 4-(2,3-epoxypropoxy)-N, N-bis (2,3-epoxypropyl) aniline (p. 4, lines 45-50) which contains a nitrogen atom, but TENGXUN does not exemplify this resin. TENGXUN teaches that its resin contains an accelerator (Abstract). TENGXUN teaches dimethylaniline as an accelerator (p. 4, about line 50) which contains a nitrogen atom. TENGXUN exemplifies resins which contain this nitrogen-containing accelerator (p. 5, Example 2).
Regarding Claim 6, TENGXUN teaches the invention of Claim 1 where TENGXUN teaches that its diene-based polymer is polybutadiene rubber (Abstract).
Regarding Claim 20, TENGXUN teaches the invention of Claim 5. TENGXUN teaches that its diene-based polymer is polybutadiene rubber (Abstract).
Claims 2 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SHANGHAI TENGXUN (CN-108659203-A) as evidenced by MAEJIMA (US-20140100321-A1) and HU (CN-108047431-A).
Regarding Claim 2, TENGXUN teaches the invention of Claim 1. TENGXUN generally teaches that its composition contains 2-60 parts of maleic-anhydride functionalized polybutadiene and 60-100 parts of epoxy resin (p. 4, lines 20-21). TENGXUN generally teaches many epoxy resins that have molecular weights of about 200-500 g/mol (p. 4, lines 45-50). TENGXUN teaches that the molecular weight of its maleic anhydride modified polybutadiene is 1000-6000 g/mol (p. 4, lines 31-34). This broadly calculates to a molar ratio of 0.67-50 mol of modified butadiene per 100 mols of epoxy resin which encompasses the 1-30 mol% recited by the claim. TENGXUN exemplifies 12.5 parts by weight of Polyvest OC 1200S modified butadiene and 87.47 parts by weight of E-51 epoxy resin (p. 5, Example 2). TENGXUN does not teach the molecular weights of these components which are needed to determine the molar ratios. Here, MAEJIMA is used as an evidentiary reference to disclose the inherent molecular weight of the Polyvest OC 1200S component taught by TENGXUN. See MPEP 2131.01-III. for this use of a secondary evidentiary reference in 102 rejections. MAEJIMA teaches that Polyvest OC800S has a molecular weight of 1800-2400 g/mol ([0159]). Here, HU is used as an evidentiary reference to disclose the inherent molecular weight of the E-51 epoxy taught by TENGXUN. HU teaches that E-51 has a molecular weight of 392 g/mol (p. 5, Embodiment 1-(1)). Using the molecular weights provided by the evidence of MAEJIMA and HU, the exemplary composition taught by TENGXUN calculates to 12.5/(1800-2400) ≈ 0.0052-0.0069 mols of modified polybutadiene 87.47/392 ≈ 0.2231 mol of E-51 epoxy. This calculates to 2.33-3.11 mol of modified polybutadiene per 100 mol of epoxy which is within the 1-30 mol% that is recited by the claim.
Regarding Claim 14, TENGXUN teaches the invention of Claim 2. TENGXUN generally teaches a specific epoxy resin, 4-(2,3-epoxypropoxy)-N, N-bis (2,3-epoxypropyl) aniline (p. 4, lines 45-50) which contains a nitrogen atom, but TENGXUN does not exemplify this resin. TENGXUN teaches that its resin contains an accelerator (Abstract). TENGXUN teaches dimethylaniline as an accelerator (p. 4, about line 50) which contains a nitrogen atom. TENGXUN exemplifies resins which contain this nitrogen-containing accelerator (p. 5, Example 2).
Regarding Claim 15, TENGXUN teaches the invention of Claim 2. TENGXUN teaches that its diene-based polymer is polybutadiene rubber (Abstract).
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.
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.
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.
Claims 3 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over SHANGHAI TENGXUN (CN-108659203-A) in view of SUN (CN-108329847-A).
Regarding Claim 3, TENGXUN teaches the invention of Claim 1 above. TENGXUN teaches that its composition is used in electrical insulating applications, adhesives, potting adhesives and coatings (Abstract; p. 8 final paragraph). TENGXUN does not teach that its composition contains boron. SUN, in an invention of a heat-conductive insulating glue (Abstract) containing an epoxy resin (p.3 second to last paragraph), a boron-modified phenolic curing agent (p.3 second to last paragraph) and may contain carboxy-terminated diene rubber (p. 4, par. 3; claim 5), teaches adding a heat conductive filler such as boron nitride (p. 4, par 7). SUN exemplifies both a boron-modified curing agent and a boron nitride conductive filler (p. 5, embodiment 3). SUN teaches that using its boron-modified phenolic curing agent improves the heat resistance and peel strength of the glued membrane (Abstract) and improving the thermal conductivity of its adhesive in printed circuit boards prevent overheating (p. 3, background paragraph). It would be obvious to one or ordinary skill in the art at the time of the effective filing date of the current invention to modify the electrical insulating adhesive invention of TENGXUN with the teachings of SUN and include either a boron-modified curing agent or a boron nitride thermally conductive filler for the purpose of improving heat resistance, peel strength and to prevent overheating. Either of these modifications would add a boron atom into the resin.
Regarding Claim 16, modified TENGXUN teaches the invention of Claim 3. TENGXUN generally teaches a specific epoxy resin, 4-(2,3-epoxypropoxy)-N, N-bis (2,3-epoxypropyl) aniline (p. 4, lines 45-50) which contains a nitrogen atom, but TENGXUN does not exemplify this resin. TENGXUN teaches that its resin contains an accelerator (Abstract). TENGXUN teaches dimethylaniline as an accelerator (p. 4, about line 50) which contains a nitrogen atom. TENGXUN exemplifies resins which contain this nitrogen-containing accelerator (p. 5, Example 2).
Regarding Claim 17, modified TENGXUN teaches the invention of Claim 3. TENGXUN teaches that its diene-based polymer is polybutadiene rubber (Abstract).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over SHANGHAI TENGXUN (CN-108659203-A) as evidenced by MAEJIMA (US-20140100321-A1) and HU (CN-108047431-A), in view of SUN (CN-108329847-A).
Regarding Claim 13, TENGXUN as evidenced by MAEJIMA and HU teaches the invention of Claim 2 above. TENGXUN teaches that its composition is used in electrical insulating applications, adhesives, potting adhesives and coatings (Abstract; p. 8 final paragraph). TENGXUN does not teach that its composition contains boron. SUN, in an invention of a heat-conductive insulating glue (Abstract) containing an epoxy resin (p.3 second to last paragraph), a boron-modified phenolic curing agent (p.3 second to last paragraph) and may contain carboxy-terminated diene rubber (p. 4, par. 3; claim 5), teaches adding a heat conductive filler such as boron nitride (p. 4, par 7). SUN exemplifies both a boron-modified curing agent and a boron nitride conductive filler (p. 5, embodiment 3). SUN teaches that using its boron-modified phenolic curing agent improves the heat resistance and peel strength of the glued membrane (Abstract) and improving the thermal conductivity of its adhesive in printed circuit boards prevent overheating (p. 3, background paragraph). It would be obvious to one or ordinary skill in the art at the time of the effective filing date of the current invention to modify the electrical insulating adhesive invention of TENGXUN with the teachings of SUN and include either a boron-modified curing agent or a boron nitride thermally conductive filler for the purpose of improving heat resistance, peel strength and to prevent overheating. Either of these modifications would add a boron atom into the resin.
Allowable Subject Matter
Claims 4 and 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, SHANGHAI TENGXUN (CN-108659203-A), cited in the rejections above, teaches an epoxy resin which is modified with maleic-anhydride-modified polybutadiene, but TENGXUN does not teach that its polybutadiene is bonded to the main chain of the epoxy resin via a boron atom as is recited in Claim 4. SUN (CN-108329847-A), teaches epoxy resins which include toughening agents which may contain carboxy-modified diene polymers that include boron atoms by way of a boron curing agent and boron nitride as thermally-conductive filler and, but SUN does not teach that its diene polymer components are grafted on the epoxy main chain via a boron atom as is recited in Claim 4.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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