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 .
Claim Objections
Claim 3 is objected to because of the following informalities: the parentheses around the part of the claim reading “(in formulas…or (2).)” should be deleted. (The parentheses in “formula (1)” or “(2)” do not need to be deleted.) Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sato et al. (WO 2021/205675).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Note: citations refer to the machine translation of WO ‘675 provided with this Office Action.
Regarding claim 1:
Sato WO ‘675 discloses an adhesive composition comprising (A) a bismaleimide resin and (B) an inorganic filler [abstract; 0001; 0012]. The bismaleimide resin (A) is obtained from an aromatic tetracarboxylic acid, a dimer diamine, and maleic anhydride [0012-0013; 0018-0024]. The inorganic filler (B) comprises silica having an average particle size of 50 nm or more and is treated with phenylaminosilane [0031-0035]. The amount of filler (B) in the composition is 5-55%, preferably 10-35% by mass [0036]. Examples disclose the use of silica provided under the trade name YA050C-KJK which has an average particle size of 50 nm and is treated with phenylaminosilane [0075-0077]. The examiner additionally provides a machine translation of Table 3. Example 19 discloses the use of 11.5% by mass of the silica (11.5=13.03/(100+13.03)*100).
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630
3555
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227
1278
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Although Sato is silent with regard to an aggregation particle size, the examiner submits that the prior art compositions comprising the same components as presently claimed have the same properties as presently claimed, including the maximum aggregation particle size.
Regarding claim 2:
Sato discloses pyromellitic dianhydride [0019].
Regarding claim 3:
Sato discloses dimer diamines according to the same formulas (1) and (2) [0021-0022].
Regarding claim 4:
Sato discloses a molecular weight of 3000-25000 [0029].
Regarding claims 5-6:
Sato discloses a polymerization initiator, including organic peroxide [0039].
Regarding claims 7-11:
Sato discloses a cured product, including an adhesive sheet comprising the composition on a substrate, a laminate formed by thermocompression of a metal to an adhesive sheet, and a flexible printed circuit board [0049-0053].
Claim Rejections - 35 USC § 103
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being obvious over Sato et al. (WO 2022/025123).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Note: citations refer to the machine translation of WO ‘123 provided with this Office Action.
Regarding claim 1:
Sato WO ‘123 discloses an adhesive composition comprising (A) a bismaleimide resin and (B) an inorganic filler [abstract; 0001; 0012]. The bismaleimide resin (A) is obtained from an aromatic tetracarboxylic acid, a dimer diamine, and maleic anhydride [0011-0013; 0016-0022]. The inorganic filler (B) comprises silica having an average particle size of 50 nm or more and is treated with phenylaminosilane [0030-0032]. The amount of filler (B) in the composition is 5-55%, preferably 5-25% by mass [0034]. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of silica, including over amounts within the presently claimed range, to adjust the adhesiveness, dielectric properties, and heat resistance as desired for a given end use.
Although Sato is silent with regard to an aggregation particle size, the examiner submits that the prior art compositions comprising the same components as presently claimed have the same properties as presently claimed, including the maximum aggregation particle size.
Regarding claim 2:
Sato discloses pyromellitic dianhydride [0018].
Regarding claim 3:
Sato discloses dimer diamines according to the same formulas (1) and (2) [0020-0022].
Regarding claim 4:
Sato discloses a molecular weight of 3000-25000 [0028].
Regarding claims 5-6:
Sato discloses a polymerization initiator, including organic peroxide [0037].
Regarding claims 7-11:
Sato discloses a cured product, including an adhesive sheet comprising the composition on a substrate, a laminate formed by thermocompression of a metal to an adhesive sheet, and a flexible printed circuit board [0047-0051].
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (WO 2020/196070) in view of Umehara et al. (US 2021/0032424) as evidenced by Osada et al. (US 2021/0024749) and Katagiri (WO 2023/053620).
Note: US 2022/0145151 is used as an English equivalent of WO ‘070. Citations refer US ‘151.
Note: citations refer to the machine translation of WO ‘620 provided with this Office Action.
Regarding claims 1 and 3:
Watanabe discloses a resin composition comprises a maleimide resin [abstract; 0001; 0008-0012]. Although the reference does not explicitly disclose the present monomers (a1) through (a3) the reference discloses bismaleimides having structures that are equivalent to polymers formed from such monomers. See paragraphs [0033-0043], particularly formulas A1-1-1 through A1-3-1, which disclose residues of aromatic tetracarboxylic acid, dimer diamines encompassed by present formula (1), and maleic anhydride.
Watanabe teaches the use of a surface-treated silica having a particle size of 0.1 nm to 100 µm in an amount of 10-90% by mass [0091-0096]. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Watanabe is silent with regard to a surface treatment comprising phenylaminosilane.
This compound was known in the art to have utility. For example, Umehara discloses a resin composition comprising a maleimide compound, including those comprising the residues of aromatic tetracarboxylic acid, dimer diamines encompassed by present formula (1), and maleic anhydride [abstract; 0001; 0007-0009]. The reference teaches the further use of surface-treated silica, wherein the treatment includes aminosilanes [0072]. An example silica uses phenylaminosilane [0160-0161].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use phenylaminosilane as a known surface treatment of Watanabe’s silica particles for its known purpose. Additionally, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the particle size and amount of silica, including over values presently claimed, to provide an inorganic filler as taught by Watanabe, and thereby arrive at the claimed invention.
Although Watanabe and Umehara are silent with regard to an aggregation particle size, the examiner submits that the prior art compositions comprising the same components as presently claimed have the same properties as presently claimed, including the maximum aggregation particle size.
Regarding claim 2:
See at least Watanabe’s formula A1-3-1.
Regarding claim 4:
Watanabe discloses bismaleimide resins provided under the tradenames BMI-1500 and SLK-3000 [0041-0044]. These materials have weight average molecular weights within the claimed range. As evidence, see paragraph [0091] of Osada and paragraph [0067] of Katagiri.
Regarding claim 5:
Watanabe is silent with regard to a polymerization initiator.
Such compounds were known in the art to have utility. For example, Umehara discloses the use of an initiator to adjust the polymerization conditions to prevent the need for an excessive temperature [0076]. Suitable initiators include organic peroxides [0076].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to a polymerization initiator to adjust the polymerization conditions as desired.
Regarding claims 6-11:
Watanabe discloses flexible cured sheets of the composition, including wherein the sheet is applied to a substrate and a laminate comprising the sheet and a metal foil for use in printed wiring boards [0133-0144; 0158-0163; 0184].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787