DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: The foreign priority is not in English, thus the claims have an effective date of the filing of the PCT: 5/16/22
Response to Arguments
Applicant argues the double patenting rejections should be removed due to amendment. Applicant argues rejections over just Tohjima and Amou should be withdrawn due to amendment
The Examiner agrees, claim 3 has been amended into claim 1 and was not rejected in either double patenting rejection nor was claim 3 rejected under the solo rejections of Tohjima and Amou. Those rejections have thusly been removed.
Applicant argues the combination of compounds A and B, now recited in claim 1, give unexpected low dielectric constant, low water absorption and the ability to maintain low dielectric properties even after water absorption. Applicant argues Tohjima does not rigorously test the dielectric loss tangent, only testing after 2 hours unlike the instant application that tests after 120 hours. Applicant argues Tanigawa also fails to disclose low dielectric properties are maintained after high T/high humidity testing. Applicant argues Amou does not disclose anything about water absorption.
The Examiner disagrees. The instant specification is not sufficient to show unexpected results. The instant specification only compares inventive compositions to those compositions without a hydrocarbon resin B. There are no examples with hydrocarbon resins B itself. It is unclear if the properties of the tables of the instant application are thusly an averaging of properties or something unexpected. Further, Applicant has not shown that the composition of Tohjima would not have the low dielectric constant at longer times and thus it is unclear if unexpected results exist there. That Tanigawa does not disclose low dielectric properties after high T/high humidity testing is moot since Applicant has not shown such to be unexpected. Similarly that Amou does not disclose anything about water absorption is moot. Applicants data is not sufficient to show unexpected results. As such arguments herein are not found persuasive.
Applicant argues the mixing ratio taught by the prior art references are very broad and neither limit the composition to where one might achieve the claimed invention.
The Examiner disagrees. The prior art references embrace the parts by mass of claim 1. That the references embrace, rather than anticipate, is moot. Applicant has not shown unexpected results stemming from the parts by mass. Applicant does not claim any properties and thus arguments that the prior art would not achieve various properties desired by the instant inventors are not found persuasive. As such Applicant’s arguments are not found persuasive and the rejection stands as set forth below.
Claim Objections
Rejection over Claim 3 is overcome by amendment.
Claim Rejections - 35 USC § 112
Rejection over Claims 7, 8, 9, and their dependents, 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 is overcome by amendment.
Claim Rejections - 35 USC § 102
Rejection over Claim(s) 1, 4 under 35 U.S.C. 102a1 and 102a2 as being anticipated by Tohjima (WO2021/100658, published 5/27/21, wherein US 2023/0002547 is used as an equivalent English document) is overcome by amendment to put claim 3 into claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejection over Claim(s) 5-18 under 35 U.S.C. 103 as being unpatentable over Tohjima is withdrawn for reasons set forth above.
Claim(s) 1, 6-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tohjima in view of Tanigawa (US 2018/0002485).
Elements of Tohijima and Tanigawa are as previously set forth, combined to meet the amendments of claim 1.
Tohjima discloses compounds having the following formula (abstract):
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Which meets the formula of instant claim 1. Further, Example 4 results in the following compound:
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Wherein n is 2.6, [meeting compound B of claim]. The compound may be crosslinked using a maleimide resin [0081] including 4,4’-diphenylsulfonebismalimide which has more than 6 alkyl/alkylene groups.
Tohjima includes elements as set forth above. Tohjima does not disclose those maleimide resins A of claim 1.
Tanigawa discloses resin compositions for printed wiring boards (title). The compositions comprise a maleimido resin compound A, described in [0041] wherein this A resin component gives an end composition having high adhesiveness and high frequency characteristics [0041]. Resin A may be Chemical Formula 17 of [0075] which is exemplified to be Formula 27 and Formula 29 of [0174]. Formulas 27 and 29 meet the formulas of instant claim 3, thusly also meeting claim 2. The resin is cured [0106], thus akin to Tohjima, and used for prepregs [0137], laminates [0141] and printed wiring boards [0144], all akin to Tohjima.
It would have obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Tohjima the use of the above Formula 27 and Formula 29 maleimide compounds, as taught by Tanigawa, in order to improve the adhesiveness and high frequency characteristics of the resin.
Elements above meet compound A of claim 1.
Regarding the parts by mass A: The maleimide resin may be present in amounts ranging 10x mass of the curable resin or less to 0.5 parts or more [0070], using the lower limit of 0.5x or more, if one uses 100 parts curable resin one would use 50 parts maleimide resin calculating to 33 parts A/A+B (50/150 = 33 parts maleimide with respect to 100 parts maleimide+hydrocarbon resin), embracing the parts by mass of claim 1.
Elements above meet all the requirements of claim 1.
Additional/different crosslinking resins may be used with the maleimide resin, for example one can pick an epoxy resin, an amine resin, etc [0071]. Using 2 elements known suitable for the same intended use, the epoxy and maleimide, is prima facie obvious. See In re Kerkhoven. Thus meeting claims 6-7. If one uses 100 parts hydrocarbon and 100 parts crosslinking resins, wherein a 50:50 mix of crosslinking resins is immediately envisaged for mixtures, such embraces use of 50% hydrocarbon of formula 1 (100 g hydrocarbon resin, 50 g maleimide resin, 50 g epoxy resin = 100/200 = 50%), meeting claim 8 and using this same blend calculates to 25 parts epoxy per A+B+C (50/200 = 25%), as required by claim 9. Inorganic fillers may be added [0098], as required by claim 10, phosphorous based flame retarders may be used [0095], as required by claim 11, prepregs are disclosed in [0107] and fibrous base materials such as glass fibers are disclosed in [0107], as required by claim 12, laminated boards [0108] and multilayer films [0106] are disclosed, wherein any other layer of the multilayer film can be called a support film, meeting claim 13, metal foil laminates using the resin are disclosed in [0108], as required by claim 14, the composition is used for printed wiring boards and since the composition requirements are met the ‘insulating’ requirements of claim 16 is met. Elements above further meet claims 15, 17-18.
Rejection over Claim(s) 1, 4-10, 12-18 under 35 U.S.C. 103 as being unpatentable over Amou (US 20020161091) is overcome by amendment.
Claim(s) 1, 6-10, 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amou (US 20020161091) in view of Tanigawa.
Elements of Amou and Tanigawa are as previously set forth, combined to meet the amendment to claim 1
Amou discloses low dielectric loss tangent resin compositions (title) comprising the crosslinking agent of formula 1 of the abstract. This resin is further exemplified in table 1 to be (Table 1):
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The resin may be mixed with a polymer that may be a homopolymer of N-vinylphenylmaleimide [0023], which is a maleimide compound having 6 alkylene carbons.
Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
Amou includes elements as set forth above. Amou discloses low dielectric loss tangent resins for printed wiring boards formed from crosslinking a styrene-based resin and a maleimide based polymer. Amou does not disclose those maleimide compounds of claim 1.
Tanigawa discloses resin compositions for printed wiring boards (title). The compositions comprise a maleimido resin compound A, described in [0041] wherein this A resin component gives an end composition having high adhesiveness and high frequency characteristics [0041]. Resin A may be Chemical Formula 17 of [0075] which is exemplified to be Formula 27 and Formula 29 of [0174]. Formulas 27 and 29 meet the formulas of instant claim 3, thusly also meeting claim 2. The resin is cured [0106], thus akin to Amou, and used for prepregs [0137], laminates [0141] and printed wiring boards [0144], all akin to Amou.
It would have obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Amou the use of the above Formula 27 and Formula 29 maleimide compounds, as taught by Tanigawa, in order to improve the adhesiveness and high frequency characteristics of the resin.
Elements above meet A and B of claim 1.
[0023] discloses the use of 5-95% crosslinking resin pictured above, 95-5% polyvinylmaleimide resin and 5-70 filler, (80 parts hydrocarbon resin, 20 parts maleimide resin calculates to 20/100), embracing the parts by mass of claim 1. Thus elements above meet all the requirements of claim 1.
Other polymer resins other than the polyvinylmaleimide may be used, like an acrylic ester/acrylonitrile resin [0053], combining two elements known suitable for the same intended use is prima facie obvious (see In re Kerkhoven), meeting claim 6 and 7 (it is an active ester compound and/or acrylate compound), one can have 20 parts hydrocarbon crosslinking compound of the above formula, 80 parts crosslinking resin for a ratio of 20/100, embracing and rendering prima facie obvious claims 8-9, the fillers of [0059] are inorganic as required by claim 10. The composition is an insulating composition for electrical parts [0017] such as a multilayer wiring board [0060], as required by claims 16, 18, forms a film [0062], cab be part of a copper clad film [0071], as required by claims 13-15, 17, can impregnate glass cloth [0070], as required by claim 12.
Double Patenting
Rejection over Claims 1, 4, 6-18 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-18 of copending Application No. 18/561098 (reference application) is overcome by amendment, claim 3.
Rejection over Claims 1, 4, 5-18 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5-18 of copending Application No. 18561065 (reference application) is overcome by amendment, claim 3 has been amended into claim 1 which is not met by ‘065.
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Conclusion
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 ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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