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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
Response to Amendment
The amendment filed on 04/29/2026 is entered and acknowledged by the Examiner. Claim 1 has been amended. Claim 4 was previously canceled. Claims 1-3 and 5-16 are currently pending in the instant application.
The rejection of claims 1-3 and 5-16 under 35 U.S.C. 102 (a)(2) as being anticipated by Hamakubo (EP 3882286) is withdrawn in view of Applicant’s amendment.
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 1-3 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0289166 A1 (hereinafter Makihara).
Makihara discloses a resin composition containing (See [0025] and [0026]): A polymer or copolymer (A) of a conjugated diene compound such as butadiene with at least one acrylonitrile and styrene (See [0029], claimed (D) elastomer). A thermosetting resin (B) preferably having two or more (meth)acryloyl groups in the molecule (See [0039], claimed (B) compound). The (B) thermosetting resin includes 1,6-hexandeiol di(meth)acrylate (See 0040, claimed (B) compound), which is commonly known to have a molecular weight of about 254 g/mol and exists as a clear liquid at room temperature (25°C). A (meth)acryl polymer or copolymer (C) having at least one functional group of a vinyl group, a (meth)allyl group, a (meth)acryloyl group, a maleimide group, and epoxy group, a carboxyl group, a hydroxyl group (See [0044], Emphasis added). Component (C) of Makihara fulfills the claimed (A) thermosetting resin comprises one or more group consisting of epoxy resin, maleimide resin, and allyl resin.
Makihara further discloses that the resin composition comprises fillers including metal powders and ceramic powders (See [0049]). The fillers of Makihara fulfill the claimed (C) inorganic filler.
Makihara also discloses that the resin composition having 1-20 wt% of (co)polymer (A), 0.5-25 wt% of (co)polymer (C) (See [0048]). The content of (B) 1,6-hexandeiol di(meth)acrylate (monomer 2) is about 2.08-8.20 wt% (See Table 1; [0057]).
Makihara discloses that the resin composition is coated onto a semiconductor device and heat cured (See Abstract and [0053]); thereby, forming a cured layer or film (cured product) on a substrate.
Makihara failed to anticipate the claimed invention because Makihara does not disclose with sufficient specificity to anticipates.
Give that Makihara discloses a resin composition comprises of (co)polymer (A) and (C) having at least one preferred functional group of epoxy, allyl, and maleimide combined with a thermosetting resin (B) containing (meth)acryloyl groups in the molecule, it would have been obvious at the time the invention was filed to formulate the claimed resin composition through routine experimentation for best results.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Response to Arguments
Applicant’s arguments with respect to the claims above have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
Prosecution Insights