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 .
Election/Restrictions
Claims 15-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 fails to further limit the composition of claim 1, from which it depends, because it only states an intended use of the composition without further limiting the scope of the composition itself.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-5, 9-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa et al US20180197655A1.
Regarding claim 1, Tomizawa teaches a resin composition comprising a maleimide compound, a silane compound, an inorganic filler, and a cyanate ester compound, see abstract and ¶¶0020-0021]. The inorganic filler can be selected as titanium oxide (another name for titanium dioxide) and Tomizawa further teaches that the inorganic filler can be surface treated in advance with the silane compound, ¶[0043]. The fact that Tomizawa discloses numerous types of inorganic fillers which can be suitably selected for the resin composition does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Tomizawa further teaches that the maleimide compound is in the resin composition in an amount of 15-70 parts by mass based on 100 parts by mass of the resin forming components, ¶[0038], which falls within the claimed range. The cyanate ester is in the resin composition in an amount of 0.01-40 parts by mass based on 100 parts by mass of the resin forming components, ¶[0063], which falls within the claimed range.
Regarding claim 2, Tomizawa teaches the cyanate ester can be selected from a biphenyl aralkyl type and a naphthol aralkyl type, ¶[0055].
Regarding claim 3, Tomizawa teaches the maleimide compound can be selected as bis(4-maleimidophenyl)methane, 2,2-bis(4-(4-maleimidophenoxy)-phenyl)propane, bis(3,5-dimethyl-4-maleimidophenyl)methane, bis(3-ethyl-5-methyl-4-maleimidophenyl) methane, bis(3,5-diethyl-4-maleimidophenyl)methane, or maleimides of the formula (6) which reads on applicant’s formula (2), ¶¶[0036-0037].
Regarding claim 4, Tomizawa teaches the resin composition further comprises additional resins such as an epoxy or benzoxazine resin, ¶[0064].
Regarding claim 5, Tomizawa teaches the inorganic filler, titanium oxide, can be surface treated with the styryl silane compound, which is an organosilane, ¶¶[0039, 0043] and would constitute the claimed organic layer on the surface of the titanium oxide particle based on ¶[0065] of the instant specification which lists an organosilane as an example of the organic type of surface treatment.
Regarding claim 9, Tomizawa teaches the inorganic filler is present in an amount from 100-1100 parts by mass based on 100 parts by mass of the resin forming components, ¶[0044], which overlaps with the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “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).
Regarding claims 10-11, Tomizawa teaches the inorganic filler can be selected as more than one, such as combinations of two or more, ¶[0043]. The other fillers can be selected from silica, alumina, aluminum nitride, boron nitride, and boehmite, ¶[0043], which read on the claimed additional fillers.
Regarding claim 12, Tomizawa teaches the total amount of inorganic filler is present from 100-1100 parts by mass based on 100 parts by mass of the resin forming components, ¶[0044], which overlaps with the claimed range.
Regarding claim 14, Tomizawa teaches the resin composition is for a printed circuit board, abstract and ¶[0001], which reads on the claimed printed wiring board.
Claims 1-5, 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh, C. US20140349090A1.
Regarding claims 1 and 14, Hsieh teaches a resin composition for printed circuit boards (reads on claim 14) comprising (A) 100 parts by weight of polyphenylene oxide resin; (B) 10 to 50 parts by weight of maleimide resin; (C) 5 to 100 parts by weight of polybutadiene copolymer; (D) 5 to 30 parts by weight of cyanate ester resin; and (E) 15 to 150 parts by weight of phosphazene, abstract and ¶[0011], and further comprises 10-500 parts of an inorganic filler, ¶[0042]. The inorganic filler comprises titanium dioxide, which can be pretreated with a silane coupling agent, ¶[0043], and reads on the claimed surface coated titanium dioxide. The fact that Hsieh discloses numerous types of inorganic fillers which can be suitably selected for the resin composition does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
The parts by weight of the maleimide and cyanate ester are based on 100 parts of polyphenylene oxide, but when all the resin forming components are taken into consideration, the range for the maleimide is 4.17-31.25 parts per 100 parts of resin forming components, where 60% of this range overlaps with the claimed range. This is calculated from (10 parts maleimide/240 parts total resin solids) X 100 = 4.17 parts. The total resin solid content is calculated from 100 PPO + 10 maleimide + 100 polybutadiene + 30 cyanate ester= 240 parts. The maximum is calculated from (50 parts maleimide/ 160 parts total resin solids) X 100 = 31.25 parts. The total resin solid content is calculated from 100 PPO + 50 maleimide + 5 polybutadiene + 5 cyanate ester= 160 parts.
The range for the cyanate ester is 1.96-20.69 parts per 100 parts resin forming components, which falls within the claimed range. This is calculated from (5 parts CE/255 parts total resin solids) X 100= 1.96 parts. The total resin solid content is calculated from 100 PPO + 50 maleimide + 100 polybutadiene + 5 CE =255 parts.
The maximum is calculated from (30 parts CE/145 parts total resin solids) X 100= 20.69 parts. The total resin solid content is calculated from 100 PPO + 10 maleimide + 5 polybutadiene + 30 CE =145 parts.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “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).
Regarding claim 2, Hsieh teaches the cyanate ester resin is any conventional cyanate resin selected from the phenol novolac type, bisphenol A, naphthalene type, or bisphenol F type, ¶¶[0017-0019].
Regarding claim 3, Hsieh teaches the maleimide resin is selected from 4,4'-diphenylmethane bismaleimide which is another name for Bis(4-maleimidophenyl) methane and reads on claim 3.
Regarding claims 4 and 13, Hsieh teaches the resin further comprises an epoxy resin which can be selected from BPA A epoxy, which is a biphenyl aralkyl type, and a naphthalene type, ¶[0045].
Regarding claim 5, Hsieh teaches the inorganic filler, titanium dioxide, can be pretreated with a silane ¶[0043]. The silane comprises amino or epoxy silanes, ¶[0051]. This surface treatment reads on the claimed organic surface layer based on ¶[0065-0067] of the instant specification which states amino and epoxy silanes form the organic surface treatment for the titanium dioxide.
Regarding claim 9, Hsieh teaches the resin further comprises 10-500 parts of inorganic filler, ¶[0042]. This is based on 100 parts of the PPO, but when all of the resin components are taken into consideration, the range of the inorganic filler amount is 3.57-416.67 parts per 100 parts of the resin solid content, which overlaps with the claimed range. This is calculated from (10 parts filler/280 parts resin solids)x 100= 3.57 parts. The maximum total resin solid content is calculated from 100 PPO + 50 maleimide + 100 polybutadiene + 30 cyanate ester = 280 parts. The 416.67 parts is calculated from (500 parts filler/ 120 parts resin solid content) X 100. The minimum total resin solid content is calculated from 100 PPO + 10 maleimide + 5 polybutadiene + 5 cyanate ester = 120 parts.
Regarding claims 10-12, Hsieh teaches the inorganic filler comprises any of those listed in ¶[0043], which means there can be more than one filler in combination with the resin components. In addition to the titanium dioxide, silicon dioxide (silica), aluminum hydroxide, aluminum nitride, boron nitride, zinc molybdate, and boehmite are listed, ¶[0043], and read on the claimed fillers of claims 10-11.
The total inorganic filler content is calculated above based on 100 parts of the resin solid content, and is 3.57-416.67 parts, which overlaps with the claimed range of claim 12.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa et al US20180197655A1 in view of Niedenzu et al US5501732.
Regarding claim 6, Tomizawa teaches the invention according to claim 1 as explained above. Tomizawa is silent to how much of the silane is used to treat the surface of the titanium dioxide based on the mass of the surface coated titanium dioxide, but teaches that any method of surface treatment is suitable including the slurry method, ¶[0043].
Niedenzu discloses a process for preparing silanized titanium dioxide pigments, abstract. It is further disclosed the silanized pigment is for plastic and coating applications, Col. 1 lines 15-16. Niedenzu discloses a slurry method of treating the pigment to make it hydrophobic, Col. 2 lines 24-28. The silanes exemplified by Niedenzu are organosilanes, Col. 3 lines 6-10, and the amount of organosilane used for treating the pigment is 0.1-5 wt.% based on the weight of the silanized titanium dioxide, Col. 3 line 51, which anticipates the claimed range. This range is suitable for hydrophobing the surface of the pigment and preparing it for use in plastics and coatings, Col. 3 lines 43-46.
Tomizawa is analogous to the claimed invention because it is in the field of resin compositions for printed circuit boards comprising similar resin ingredients such as maleimides, cyanate ester, and silane treated fillers.
Niedenzu is analogous to the claimed invention because it is in the field of silane treating inorganic fillers such as titanium dioxide for use in resin compositions.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Tomizawa but pre-treating the titanium dioxide filler with the silane in an amount of 0.1-5 wt.% of silane based on the amount of silanized filler with the motivation of producing a hydrophobic titanium dioxide suitable for mixing into the resin composition as disclosed by Niedenzu.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hsieh, C. US20140349090A1 in view of Niedenzu et al US5501732.
Regarding claim 6, Hsieh teaches the invention according to claim 1 as explained above. Hsieh is silent to how much of the silane is used to treat the surface of the titanium dioxide based on the mass of the surface treated titanium dioxide.
Niedenzu discloses a process for preparing silanized titanium dioxide pigments, abstract. It is further disclosed the silanized pigment is for plastic and coating applications, Col. 1 lines 15-16. Niedenzu discloses a slurry method of treating the pigment to make it hydrophobic, Col. 2 lines 24-28. The silanes exemplified by Niedenzu are organosilanes, Col. 3 lines 6-10, and the amount of organosilane used for treating the pigment is 0.1-5 wt.% based on the weight of the silanized titanium dioxide, Col. 3 line 51, which anticipates the claimed range. This range is suitable for hydrophobing the surface of the pigment and preparing it for use in plastics and coatings, Col. 3 lines 43-46.
Hsieh is analogous to the claimed invention because it is in the field of resin compositions for printed circuit boards comprising similar resin ingredients such as maleimides, cyanate ester, and silane treated fillers.
Niedenzu is analogous to the claimed invention because it is in the field of silane treating inorganic fillers such as titanium dioxide for use in resin compositions.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Hsieh but pre-treating the titanium dioxide filler with the silane in an amount of 0.1-5 wt.% of silane based on the amount of silanized filler with the motivation of producing a hydrophobic titanium dioxide suitable for mixing into the resin composition as disclosed by Niedenzu.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa et al US20180197655A1 in view of Hsieh, C. US20140349090A1.
Regarding claim 13, Tomizawa teaches the invention according to claim 1 as explained above. Tomizawa does not teach the epoxy resins as claimed and is silent as to the specific types of epoxy resins to add to the composition.
Hsieh discloses a resin composition for printed circuit boards ¶[0001] comprising a maleimide resin, cyanate ester, ¶[0011], and inorganic filler which can be titanium dioxide and can also be surface treated with a silane ¶[0043]. The resin further comprises an epoxy resin which can be selected from BPA A epoxy, which is a biphenyl aralkyl type, and a naphthalene type, ¶[0045].
Tomizawa and Hsieh are analogous to the claimed invention because both are in the field of resin compositions for printed circuit boards comprising similar resin ingredients such as maleimides, cyanate ester, and silane treated fillers.
When the prior art is silent to the exact type of resin to use, the skilled artisan will look to similar inventions, such as Hsieh, for the specific resins.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the invention of Tomizawa selecting BPA A epoxy resin or naphthalene epoxy resin as the epoxy resin for the composition because it would produce the predictable result of a heat-resistant resin composition for printed circuit boards as disclosed by Hsieh.
Allowable Subject Matter
Claims 7 and 8 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 cited prior art does not teach, suggest, or disclose coating the titanium dioxide in an inorganic oxide layer with silica, alumina, or zirconia before treating with the silane to form the organic layer on the surface of the inorganic oxide layer. Tomizawa, Hsieh, and Niedenzu only disclose treating the inorganic fillers with a silane and the advantage of the inorganic filler having two layers over the particle, one inorganic oxide and one of the organosilane, is not disclosed nor is it obvious.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765