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 amendment filed 12/29/2025 has been entered. Claims 2-4 and 10-12 have been canceled. New claims 15-20 have been added. Claims 1, 5-9, and 13-20 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1, 5-9, and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okamoto (JP2017031239A, please refer to the attached machine translation for the below cited sections). Okamoto discloses a curable resin composition that can provide cured products with excellent heat resistance and flame retardancy, as well as a prepreg, metal-foil-clad laminate, resin sheet, and printed circuit board formed from the resin composition as in instant claims 5-9 and 13-14 (Paragraphs 0001, 0007, 0016-0017, and 0074-0075), with working examples exhibiting a mass loss rate at 550°C of 7.9% to 11.2% as measured by thermogravimetric analysis (TGA) at a heating rate of 10°C/min (Examples). More specifically, Okamoto discloses Inventive Example 3 containing 65.9 parts by mass of a phenolic resin A (reading upon the claimed “curing agent” that “comprises…a phenolic compound”), 100 parts by mass of N,N'-4,4-diphenylmethanebismaleimide BMI-1000 (reading upon the claimed “principal agent” that “comprises…a maleimide compound” and thus constituting 60.27 parts by mass per 100 parts by mass of a total of the principal agent and the curing agent), 5.2 parts by mass of dicumyl peroxide (DCPO), and 835.6 parts by mass of silica (83wt% of the composition), which exhibits a mass loss at 550°C of 8.0% (falling within the claimed range); Inventive Example 4 containing 65.9 parts by mass of a phenolic resin B (reading upon the claimed “curing agent” that “comprises…a phenolic compound”), 100 parts by mass of BMI-1000 (reading upon the claimed “principal agent” that “comprises…a maleimide compound” and thus constituting 60.27 parts by mass per 100 parts by mass of a total of the principal agent and the curing agent), 5.2 parts by mass of DCPO, and 835.6 parts by mass of silica (83wt% of the composition), which exhibits a mass loss at 550°C of 7.9%; Comparative Example 1 containing 53.6 parts by mass of a phenolic resin X (reading upon the claimed “curing agent” that “comprises…a phenolic compound”), 100 parts by mass of BMI-1000 (reading upon the claimed “principal agent” that “comprises…a maleimide compound” and thus constituting 65.1 parts by mass per 100 parts by mass of a total of the principal agent and the curing agent), 2.0 parts by mass of DCPO, and 759.9 parts by mass of silica (83wt% of the composition), which exhibits a mass loss at 550°C of 9.1%; and Comparative Example 2 containing 59.0 parts by mass of a phenolic resin Y (reading upon the claimed “curing agent” that “comprises…a phenolic compound”), 100 parts by mass of an epoxy resin (reading upon the claimed “principal agent” that “comprises…a maleimide compound” and thus constituting 62.9 parts by mass per 100 parts by mass of a total of the principal agent and the curing agent), 1.3 parts by mass of triphenylphosphine as a curing accelerator, and 782.8 parts by mass of silica (83wt% of the composition), which exhibits a mass loss at 550°C of 11.2%; and given that the TGA of Okamoto is conducted at a slower heating ramp rate of 10°C/min than the claimed 90°C/min, under a N2 flow (as evidenced by WO2016/002704A1, see attached machine translation, Paragraph 0086 and Comparative Examples 1-2 which are identical to Comparative Examples 1-2 of Okamoto), thereby allowing even more time to detect mass loss, with each of the above examples of Okamoto containing more than 80wt% of silica that would not decompose at 550°C or even at the upper heating temperature of 800°C (thus less than 20wt% available for mass loss), the Examiner takes the position that Okamoto discloses the claimed invention with sufficient specificity to anticipate instant claims 1, 5-9 and 13-14.
With respect to instant claim 15, given that the claimed “epoxy compound” is recited as an alternative “principal agent” in instant claim 1 from which instant claim 15 depends and is not positively recited in instant claim 15 as being present in the curable composition as a principal agent, the Examiner takes the position that Examples 3-4 and Comparative Example 1 of Okamoto, which contain the claimed alternative “maleimide compound” as recited in instant claim 1, anticipate instant claim 15.
Similarly, with respect to instant claim 16, given that the claimed “maleimide compound” is recited as an alternative “principal agent” to the epoxy resin in instant claim 1 and not positively recited as being present in the curable composition of instant claim 16 as a principal agent, the Examiner takes the position that Comparative Example 2 of Okamoto utilizing an epoxy resin anticipates instant claim 16.
With respect to instant claims 17-19, given that Okamoto utilizes an allyl etherified biphenylaralkyl novolac phenolic compound in Inventive Examples 3-4, reading upon the claimed phenolic compound(s) of instant claim 17 as the claimed “curing agent”, and that the claimed amide compound and claimed cyanate ester compound are alternative curing agents recited in instant claim 1, from which instant claims 17-19 depend, and are not positively recited in instant claims 18-19 as being present in the curable resin composition as the curing agent(s), the Examiner takes the position that Okamoto anticipates instant claims 17-19.
Claim Rejections - 35 USC § 102/103
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, 5-9, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ogashiwa (US2013/0045650A1). Ogashiwa discloses a curable resin composition that can provide a cured product that possesses excellent heat resistance and flame retardance (Abstract), as well as a prepreg, metal-foil-clad laminate, resin sheet, and printed circuit board formed from the resin composition as an insulating layer as in instant claims 5-9 and 13-14 (Entire document, particularly Abstract, Paragraphs 0001, 0072-0079, and 0116), wherein the curable resin composition comprises an epoxy resin (A) represented by formula (I), i.e., an epoxy compound as in instant claim 15 (Abstract); a maleimide compound (B), preferably bis(4-maleimidophenyl)methane, 2,2-bis{4-(4-maleimidophenoxy)-phenyl}propane, and/or bis(3-ethyl-5-methyl-4-maleimidophenyl)methane (Paragraph 0048); a curing agent (C), preferably a cyanate ester resin (C1) or a phenolic resin (C2) (Paragraph 0051); and an inorganic filler in a content of preferably 50 to 200 parts by weight, based on 100 parts by weight of the epoxy resin (A), the maleimide compound (B), and the curing agent (C), and more preferably 80 to 100 parts by weight (Abstract, Paragraph 0065).
Ogashiwa discloses at least one working example having components as instantly claimed in contents within the claimed ranges as recited in instant claims 1 and 15-20; particularly an example resin composition, Example 10, containing 30 parts by weight of a phenyl aralkyl phenol resin (reading upon the claimed phenolic compound as recited in instant claim 1), 10 parts by weight of an aminotriazine novolak resin (a “novolac phenolic compound” as a “curing agent” as in instant claims 1 and 17), 10 parts by weight of bis(3-ethyl-5-methyl-4maleimidophenyl)methane BMI-70 (reading upon the claimed “maleimide compound” of instant claims 1 and 16), 50 parts by weight of a polyoxynaphthylene epoxy resin (reading upon the claimed “epoxy compound” of instant claims 1 and 15), 1 part by weight of a wetting/dispersing agent, 100 parts by weight of spherical fused silica particles, and 0.03 part by weight of imidazole, that are mixed together to prepare a varnish which is then diluted and utilized to impregnate into and coat on a glass woven fabric (as in instant claim 5), such that the resin composition contains 60 parts by mass of “principal agent” (i.e., the BMI-70 and the epoxy resin) per 100 parts by mass of a total of the principal agent and the curing agent as in instant claim 1, and 100 parts of silica filler to 100 parts of the curable resin (i.e., principal agent and curing agent) as in instant claim 20; and although Ogashiwa clearly discloses that the resin compositions provide cured products that possess excellent heat resistance as noted above, Ogashiwa does not specifically disclose the mass loss of the cured resin compositions of the examples, particularly the above Example 10, of “less than 27% by mass, as measured by thermogravimetric analysis performed in a nitrogen atmosphere, wherein the temperature is increased from 30° C to 800° C at a rate of 90° C per minute, and the mass loss is determined over a temperature range of 30° C to 550° C, based on an initial mass of the cured product” as recited in instant claim 1. However, given that the curable resin composition(s) disclosed by Ogashiwa, particularly as in the above example, contain(s) the same components and contents as in the instantly claimed invention, the Examiner takes the position that the resin composition disclosed by Ogashiwa in the above example would inherently provide a cured product that exhibits a mass loss as instantly claimed such that absent any evidence to the contrary, Ogashiwa anticipates instant claims 1, 5-9, 13-17, and 20 in light of the working examples, particularly as noted above, as well as instant claims 18 and 19 given that the claimed amide compound and cyanate ester compound, respectively, are recited as alternative curing agents in instant claim 1 and are not positively recited as being present in resin composition of instant claims 18-19. Alternatively, given that the curable resin composition disclosed by Ogashiwa contains the same components and in contents as in the claimed invention such that upon curing would be the same as the cured product of the instant invention, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the resin composition taught by Ogashiwa to exhibit mass loss values as instantly claimed such that absent any evidence to the contrary or any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1, 5-9, and 13-20 alternatively would have been obvious over Ogashiwa.
Claims 1, 5-9, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ogashiwa (US2014/0227531A1, hereinafter referred to as Ogashiwa ‘531). Ogashiwa ‘531 discloses a curable resin composition for printed wiring boards, particularly requiring high heat resistance (Abstract, Paragraph 0053), as well as a prepreg, metal-foil-clad laminate, resin sheet, and printed circuit board formed from the resin composition as an insulating layer as in instant claims 5-9 and 13-14 (Entire document, particularly Abstract, Paragraphs 0001, 0039-0046, 0086-0089, and 0130), wherein the curable resin composition comprises a specific maleimide compound (A), a cyanate ester compound (B), a non-halogen epoxy resin (C), and an inorganic filler (D) in a content of preferably 50 to 400 parts by mass based on 100 parts by mass in total of the maleimide compound (A), the cyanate ester compound (B), and the non-halogen epoxy resin (C) (Abstract, Paragraph 0070). Ogashiwa ‘531 discloses that the maleimide compound (A) is represented by general formula (1) as shown in Paragraph 0012 (i.e., a novolac maleimide compound as in instant claim 16), present in a content of preferably 10 to 50 parts by mass based on 100 parts by mass in total of (A), (B), and (C) (Paragraph 0057), with working examples specifically utilizing BMI-2300 (as utilized in the examples of the present application); the cyanate ester compound (B) is preferably a naphthol aralkyl-based cyanate ester compound and/or a novolac-based cyanate ester compound (as in instant claim 19, Paragraph 0036), present in a content of preferably 1 to 50 parts by mass based on 100 parts by mass in total of (A), (B), and (C) (Paragraph 0061), with at least one working example utilizing a novolac-based cyanate ester PT-30 manufactured by Lonza (as utilized in the examples of the present application); the non-halogen epoxy resin (C) is preferably a phenol phenyl aralkyl novolac-based epoxy resin represented by general formula (5), a phenol biphenyl aralkyl-based epoxy resin represented by general formula (6), a naphthol aralkyl-based epoxy resin represented by general formula (7), and/or a polyoxynaphthylene-based epoxy resin (Paragraph 0064), present in a content of preferably 5 to 50 parts by mass based on 100 parts by mass in total of (A), (B), and (C) (Paragraph 0066), with examples utilizing a biphenyl aralkyl-based epoxy resin available as NC-3000-FH (as utilized in the examples of the present application); and the inorganic filler may be selected from those recited in Paragraph 0068, with boehmite and silica being more preferred (Paragraph 0068), with working examples containing either boehmite or spherical fused silica as inorganic filler.
Ogashiwa ‘531 discloses at least one working example having components as instantly claimed in contents within the claimed ranges as recited in instant claims 1 and 15-20; particularly an example resin composition, Example 31, comprising 36 parts by mass of PT-30 novolac-based cyanate ester (a “curing agent” that “comprises…a cyanate ester compound” as in instant claim 1 and particularly as in instant claim 19), 24 parts by mass of BMI-2300 maleimide compound (a “principal agent” that “comprises…a maleimide compound” as in instant claim 1 and particularly as in instant claim 16), 40 parts by mass of NC-3000-FH epoxy resin (a “principal agent” that “comprises…an epoxy compound” as in instant claim 1, particularly as in instant claim 15, and thus a total content of “principal agent” of 64 parts to 100 parts of principal agent and curing agent falling within the claimed range of 60 to 95 parts), 1 part of wetting/dispersing agent, 120 parts of boehmite (an inorganic filler in a content of 120 parts by mass to 100 parts by mass of the curable resin as in instant claim 20), and 0.02 part by mass of zinc octylate, to obtain a varnish that is then diluted and impregnated into and coated on a glass woven fabric to produce a prepreg and a metal foil-clad laminate therefrom (Examples, particularly Paragraphs 0095, 0125, and 0130); and although Ogashiwa ‘531 clearly discloses that the resin compositions provide cured products that possess excellent heat resistance as noted above, Ogashiwa ‘531 does not specifically disclose the mass loss of the cured resin compositions of the examples of “less than 27% by mass, as measured by thermogravimetric analysis performed in a nitrogen atmosphere, wherein the temperature is increased from 30° C to 800° C at a rate of 90° C per minute, and the mass loss is determined over a temperature range of 30° C to 550° C, based on an initial mass of the cured product” as recited in instant claim 1. However, given that the curable resin composition(s) disclosed by Ogashiwa ‘531, particularly as in the working examples, contain(s) the same components and contents as in the instantly claimed invention, the Examiner takes the position that the resin composition disclosed by Ogashiwa ‘531 would inherently provide a cured product that exhibits a mass loss as instantly claimed such that absent any evidence to the contrary, Ogashiwa ‘531 anticipates instant claims 1, 5-9, 13-17, and 19-20 in light of the working examples, particularly as noted above, as well as instant claim 18 given that the claimed amide compound is recited as alternative curing agent in instant claim 1 and is not positively recited as being present in resin composition of instant claim 18. Alternatively, given that the curable resin composition disclosed by Ogashiwa ‘531 contains the same components and in contents as in the claimed invention such that upon curing would be the same as the cured product of the instant invention, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the resin composition taught by Ogashiwa ‘531 having a composition as instantly claimed to exhibit mass loss values as instantly claimed such that absent any evidence to the contrary or any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1, 5-9, and 13-20 alternatively would have been obvious over Ogashiwa ‘531.
Claim Rejections - 35 USC § 103
Alternatively, or additionally, claims 1, 5-9, and 13-20 are (further) rejected under 35 U.S.C. 103 as being unpatentable over Ogashiwa or Ogashiwa ‘531, as applied above and further discussed below.
The teachings of each of Ogashiwa or Ogashiwa ‘531 are discussed in detail above (and incorporated herein by reference) wherein it is again noted that each reference clearly teaches a curable resin composition comprising the same components and in contents as recited in instant claims 1 and 15-20, as well as a prepreg, metal-foil-clad laminate, resin sheet, and printed circuit board formed from the resin composition as an insulating layer as in instant claims 5-9 and 13-14, wherein the curable resin composition can provide a cured product that possesses excellent heat resistance, and although each of Ogashiwa or Ogashiwa ‘531 does not specifically recite a mass loss as instantly claimed as measured by TGA under heating conditions as recited in instant claim 1, given that each reference clearly teaches components and contents as utilized in the instant invention, particularly the same commercially available compounds for the curable resin, i.e., the principal agent and the curing agent, as utilized in the examples of the present application, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize routine experimentation to determine the optimum components and contents thereof as taught by Ogashiwa or Ogashiwa ‘531, as in the working examples thereof, to provide the desired cured resin properties including desired “high heat resistance” for a particular wiring board or end use of the curable resin composition taught by Ogashiwa or Ogashiwa ‘531, wherein absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1, 5-9, and 13-20 would have been (further) obvious over the teachings of Ogashiwa or Ogashiwa ‘531 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and the claimed mass loss properties would flow naturally from following the teachings of Ogashiwa or Ogashiwa ‘531.
Response to Arguments
Applicant’s arguments with respect to claims 1, 5-9, and 13-20 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 12/29/2025.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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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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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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