DETAILED 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 .
The Office Action is in response to the application filed August 18, 2023.
Claim Analysis
Summary of Claim 1:
A curing resin composition comprising
(A) a cyanate ester resin,
(B) an epoxy resin,
(C) an active hydrogen-containing amine latent curing agent, and
(D) an ion scavenger.
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 4-5, and 18-19 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 pre-AIA the applicant regards as the invention.
Claim 4 recites the limitation "the reaction" in Lines 3, 5, and 7. There is insufficient antecedent basis for this limitation in the claim. Claims 5, and 18-19 are rejected for being dependent on a rejected base claim.
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, 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Iwatani et al. (WO 2016/157259A1; cited in the IDS submitted on 08/18/2023; US 2016/0289443A1 used as translation; hereafter as “Iwatani”).
Regarding Claim 1, Iwatani teaches a resin composition [Example 8], corresponding to the curing resin composition of Claim 1, comprising:
cyanate ester resin [Example 8; ¶ 0131], corresponding to the (A) cyanate ester resin of Claim 1;
Epoxy resin [Example 8], corresponding to the (B) epoxy resin of Claim 1;
2-phenylimidazole [Example 7; ¶ 0061], corresponding to the (C) active hydrogen-containing amine latent curing agent of Claim 1; and
ion trapping agents [Example 8], corresponding to the (D) ion scavenger of Claim 1.
However, Iwatani does not teach 2-phenylimidazole (C) with the other components (A), (B) and (D) together in one embodiment.
Nevertheless, Iwatani teaches the cyanate ester resin, epoxy resin, latent curing agent and ion scavenger with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” 2-phenylimidazole [Example 7; ¶ 0061] in lieu of or in addition to the triphenyl phosphine (TPP) [Example 8; ¶ 0061] as the curing accelerator since Iwatani teaches a finite number of identified curing accelerators that can be used interchangeably or in combination. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claims 2-3, Iwatani further teaches:
Bisphenol A dicyanate, a cyanate ester resin [Example 8; ¶ 0131], there by reading on formula (1) of Claim 2;
Wherein a single bond reads on Y1 as a single bond of Claim 2, and thereby reading on formula (Y-1) of Claim 3;
Wherein phenylene groups read on A1 and A2 as phenylene groups of Claim 2; and
Wherein R7 and R8 each represent a methyl group, corresponding to the methyl groups of Claim 3.
Regarding claims 4-5, the claims are directed towards the active hydrogen-containing amine latent curing agent (C) being at least one of a modified amine obtained by the reaction between an amine compound and either an epoxy compound, an isocyanate compound, or both an epoxy compound and an isocyanate compound.
Iwatani does not teach the reaction by which the active hydrogen-containing amine latent curing agent (C) is made.
However the language “obtained by the reaction” of claim 4 is a process and thereby Claim 4 will be interpreted as a product-by-process claim. Case law has held that “even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. Iwatani teaches the same claimed component (C) as set forth in the rejection above. Further, regarding 5, Iwatani teaches the imidazole which reads on the claimed (C) with a phenol resin [0055]. As such, the claimed (C) and (C-4) appear to be the same or similar to the imidazole of Iwatani and is thereby unpatentable.
Regarding claims 6 and 12-15, Iwatani does not explicitly teach ion exchange capacity of 1.0 meq/g or more.
Nevertheless, Iwatani teaches the same curing resin composition as required by the instant claim as set forth in the rejection above. Therefore, the curing resin of Iwatani would inherently result in the same ion exchange capacity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed curing resin composition with the same ion exchange capacity, as the reference teaches each of the claimed ingredients (cyanate ester resin, epoxy resin, latent curing agent and ion scavenger) for the same utility (for producing a curing composition) and for the same purpose (to obtain a curing resin).
Regarding Claims 7-9, and 16-20, Iwatani further teaches:
ion trapping agents including aluminum-magnesium and zirconium [Claim 6; ¶ 0078], corresponding to wherein the ion scavenger (D) is inorganic fine particles of Claims 7, and 16-20, and thereby reading on the aluminum, magnesium, and zirconium of Claims 8-9.
Regarding Claims 10-11, Iwatani further teaches:
A semiconductor device [Claim 12], corresponding to a cured product obtained by curing the curing composition of Claim 10;
Resin adhesiveness [¶ 0067], corresponding to the adhesive composition of Claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764