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 2/13/2026 has been entered. Claims 1-18 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 § 103
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamate (WO2019/198792A1, hereinafter referred to as “Yamate 2019”, please refer to the machine translation for the below cited sections) for generally the reasons recited in the prior office action and restated below with additional discussion with respect to the amended claims, wherein the Examiner further notes that given that it is prima facie to combine equivalents known for the same purpose as well as to substitute equivalents known for the same purpose (see MPEP § 2144.06), the claimed invention as amended would have been obvious over the teachings of Yamate 2019.
As discussed in the prior office action, Yamate 2019 teaches an adhesive composition comprising a copolymer having repeating units derived from an N,N-diphenylacrylamide compound (as repeating unit A) and a repeating unit derived from at least one polymerizable compound selected from a (meth)acrylic acid ester and a (meth)acrylamide (as repeating B unit), wherein the N,N-diphenylacrylamide compound of unit A has a formula of Y-N(Ar)(R) with Y representing a polymerizable functional group such as an acryloyl or methacryloyl group as in amended claims 1-2; Ar representing an unsubstituted or substituted C6 to C14 aryl group such as a phenyl group, or an unsubstituted or substituted C6 to C10 aryl C1 to C3 alkyl group such as a benzyl group; and R representing an unsubstituted or substituted C1-C6 alkyl group, an unsubstituted or substituted C3-C6 cycloalkyl group, an unsubstituted or substituted C6-C14 aryl group, or an unsubstituted or substituted C6-C10 aryl-C1-C3 alkyl group; with specific examples of the “substituent” in “unsubstituted or substituted” including halogeno group, a hydroxyl group, a C1 to C20 alkyl group, a C1 to C20 alkoxy group, a C3 to C6 cycloalkyl group, a C6 to C10 aryl group, a benzyl group, an α,α-dimethylbenzyl group, a mercapto group, a C1 to C6 alkylthio group, an amino group, a C1 to C6 alkylamino group, a C1 to C6 dialkylamino group, a nitro group, and a cyano group, or more particularly, those as recited in Paragraph 0010, with Yamate 2019 further teaching that preferred polymerizable compounds represented by formula (I) include N,N-bis(4-octylphenyl) (meth)acrylamide (e.g. reading upon formula (I’) with X1 and X2 each being a C8 alkyl group) and N,N-bis[4-(α,α-dimethylbenzyl)phenyl] (meth)acrylamide (e.g. reading upon formula (II’)), although Ar and R need not be the same as in these preferred substituted diphenyl (meth)acrylamides (e.g. Ar may be the α,α-dimethylbenzyl)phenyl while R may be the 4-octylphenyl as in Fig. 1 of the prior office action; Entire document, particularly Paragraphs 0006-0014).
With respect to the at least one polymerizable compound selected from a (meth)acrylic acid ester and a (meth)acrylamide for repeating unit B, Yamate 2019 does not specifically limit the (meth)acrylic acid ester and (meth)acrylamide to any specific compounds and teaches that examples of the (meth)acrylic acid ester and the (meth)acrylamide include those as recited in Paragraph 0016 which includes aromatic-containing compounds (Paragraphs 0015-0016). Yamate 2019 also teaches that the contents of the repeating unit A and the repeating unit B are not particularly limited (Paragraph 0017), and that in general, the “copolymer used in the…invention is not particularly limited as long as it has a repeating unit derived from the polymerizable compound represented by formula (I) and a repeating unit derived from at least one polymerizable compound selected from a (meth) acrylic acid ester and a (meth)acrylamide, and may also have a repeating unit derived from another polymerizable compound” (Paragraph 0018). Hence, given that Yamate 2019 specifically teaches exemplified polymerizable compounds for the repeating units of the copolymer that read upon the claimed polymerizable compound of formula (I’) as well as the claimed polymerizable compound of formula (II’) from which repeating units of the claimed polymer are derived, and that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the exemplified polymerizable compounds for repeating unit(s) A and/or B, or any combination thereof including a mixture of one or more of the exemplified polymerizable compounds for repeating unit A given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and prima facie to combine equivalents known for the same purpose as well as to substitute equivalents known for the same purpose, especially given that Yamate 2019 does not limit the copolymer and/or repeating unit A to just one type of polymerizable compound represented by formula (I) and instead provides a clear teaching and/or suggestion that the copolymer may include more than one repeating unit of a particular type, the Examiner takes the position that absent any clear showing of unexpected results over the teachings of Yamate 2019, the claimed polymer as recited in amended claims 1-2 would have been obvious over the teachings of Yamate 2019.
With respect to instant claims 3-9, Yamate 2019 teaches that the adhesive composition comprising the copolymer resin (thus a “resin composition” as in instant claim 3), may further comprises various components such as a binder resin reading upon the claimed “resin other than said polymer” as in instant claim 4; with examples thereof including epoxy resins as in instant claims 5-6, and wherein the binder resin may be a curable resin such as an ionizing radiation curable resin and/or a thermosetting resin as in instant claim 6, with examples thereof including prepolymers or oligomers having a (meth)acryloyl group or an epoxy group, such as an epoxy acrylate oligomer, and particularly a polyfunctional resin, with the various acrylate(s) as well as other ester-based components reading upon the broadly claimed “active ester-based compound as a curing agent” of instant claim 7 (Paragraphs 0027-0036, 0040, 0043-0044, 0046, 0049-0050, and 0052-0053). Hence, instant claims 3-7 would have been obvious over the teachings of Yamate 2019 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, with respect to instant claims 8-9, although it is again noted that Yamate 2019 teaches that the composition may further comprise a binder resin and more particularly, a thermosetting resin, Yamate 2019 does not specifically teach the thermosetting resins as in instant claims 8-9. However, given that Yamate 2019 teaches that the thermosetting resin is not particularly limited, and broadly teaches polyimide resins (a genus that encompasses maleimide resins), melamine resins, and styrene-maleic acid/anhydride resins as suitable binder resins in addition to epoxy resin, and also teaches styrene and butadiene as other polymerizable compounds suitable for use in the copolymer (Paragraphs 0020, 0028-0030), wherein the claimed thermosetting resins including the claimed modified polyphenylene ether resin of instant claim 9 are obvious species of thermosetting resins in the art (as evidenced by, for example, Murase, JP2017/125174A, see Paragraphs 0010-0018 of the machine translation), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 8-9 would have been obvious over the teachings of Yamate 2019 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 10, Yamate 2019 teaches that the composition has excellent moldability, and that a molded article can be obtained by applying the adhesive composition to a plastic substrate and curing the adhesive composition to form a film or coating film directly on the substrate (Paragraphs 0073 and 0075), and hence instant claim 10 would have been obvious over the teachings of Yamate 2019.
With respect to instant claim 11, given that the adhesive/resin composition taught by Yamate 2019 is a capable of use “for an insulating layer of printed wiring boards” and that instant claim 11 does not provide any additional material or structural limitations to differentiate the claimed resin composition from the adhesive resin composition taught by Yamate 2019, instant claim 11 would have been obvious over the teachings of Yamate 2019.
With respect to instant claim 12, Yamate 2019 teaches that the composition may further comprise an organic solvent (Paragraph 0042) and given that Yamate 2019 also teaches that the composition may be applied to a plastic substrate to form a coating film thereon that can be dried by heating (Paragraphs 0077-0079), Yamate 2019 clearly teaches a “resin varnish” as instantly claimed. Hence, instant claim 12 would have been obvious over the teachings of Yamate 2019.
With respect to instant claims 13-18, it is again noted that Yamate 2019 teaches that the adhesive resin composition may be applied to a plastic substrate to form a coating film thereon and then cured as discussed in detail above, wherein the Examiner notes that the cured coated substrate (consisting of the cured coating film and the substrate as the claimed “support film” of instant claims 14 and 16) is capable of functioning as an insulator for printed wiring boards, and that Yamate 2019 more particularly teaches that the adhesive resin composition may be utilized as a primer layer for a further-applied functional film such as a conductive film or as an adhesive layer for bonding a plastic substrate to another molded sheet such as a metal foil like a copper foil thereby reading upon and/or suggesting a metal-foil-attached laminate as in instant claim 18, and hence, the claimed invention as in instant claims 14, 16, and 18 would have been obvious over the teachings of Yamate 2019 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success (Paragraphs 0076-0086). Further, with respect to instant claims 13, 15, and 17, although Yamate 2019 does not teach that the adhesive resin composition is impregnated into a base material to form a prepreg as in instant claim 13, Yamate 2019 does teach that the composition may comprise fibrous particles such as metal oxide particles like silicon dioxide and aluminum oxide particles having a fibrous shape (Paragraph 0071), and given that Yamate 2019 does not limit the amount of fibrous particles to be incorporated into the coating film such that an adhesive or coating layer comprising fibrous particles as in Yamate 2019 may be equated to a layer or “prepreg” formed by impregnating a bed of fibers or a fibrous mat as the claimed “base material” of instant claim 13, and further given that it is well established in the art that adhesive films may be provided with a fiber reinforcement for improved mechanical properties, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed prepreg of instant claim 13 as well as the “insulator” and metal foil-attached laminate of instant claims 15 and 17, respectively, would have been obvious over the teachings of Yamate 2019 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamate (WO2020/071456A1, hereinafter referred to as “Yamate 2020”, please refer to US2021/0347726A1 as an English translation thereof for the below cited sections) taken alone or in view of Yamate (WO2018/070079A1, hereinafter referred to as “Yamate 2018”, please refer to US2021/0284879A1 as an English translation thereof for the below cited sections) for generally the reasons recited in the prior office action and restated below with additional discussion with respect to the amended claims and wherein the Examiner again notes that Yamate 2020 clearly teaches the polymer may be a polymer obtained by polymerizing two or more polymerizable compounds represented by formula (I) and hence clearly teaches a copolymer of repeating units of two or more polymerizable compounds represented by formula (I) which reads upon and/or suggests both the claimed formula (I’) and the claimed formula (II’).
As discussed in the prior office action, Yamate 2020 teaches an adhesive composition comprising a polymer having repeating units derived from a polymerizable compound of the following formula (I):
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“in which X1 and X2 each independently represent a C7 to C20 alkyl group or a C7 to C20 alkoxy group; n represents 0 or 1; Z1 and Z2 each independently represent a single bond or a C1 to C3 alkylene group; R each independently represents an organic group or a halogeno group; m1 and m2 each independently represent any integer of 0 to 4; and Y represents a polymerizable functional group” (Abstract), particularly an acryloyl or methacryloyl group (Paragraph 0006, as in instant claims 1-2). Yamate 2020 recites preferred groups for formula (I) in Paragraphs 0012-0033, teaching that the organic group for each R is not particularly limited and may be, for example, a C1 to C6 alkyl group such as a methyl group or t-butyl group or a C6 to C10 aryl group such as a phenyl group or naphthyl, with preferred compounds recited in Paragraph 0034 including N,N-bis(4-octylphenyl) (meth)acrylamide (e.g. reading upon the instantly claimed formula (I’) with Z1 and Z2 being single bonds, X1 and X2 each being a C8 alkyl group, n=1, and Y representing a (meth)acryloyl group as in instant claims 1-2) and N-(4-octylphenyl)-N-phenyl(meth)acrylamide which also reads upon the instantly claimed formula (I’) as above but with n=0), and given that a benzyl group or an alkylbenzyl group such as α,α-dimethylbenzyl as an organic group R substituent would have been obvious to one having ordinary skill in the art over the teachings of Yamate 2020 taken alone, or particularly in light of Yamate 2018 which teaches a similar adhesive composition comprising as similar polymer having repeating units derived from a similar polymerizable compound with benzyl and α,α-dimethylbenzyl as suitable organic substituents equivalent to a substituent of C1 to C6 alkyl group or C6 to C10 aryl group, as in Yamate 2020, on the Ar and/or R aryl group of the similar polymerizable compound Y-N(Ar)(R) as recited in Paragraph 0027 of Yamate 2018 (see also Abstract and Paragraphs 0006-0019), the claimed formula (II’) would have been obvious over the teaching of Yamate 2020 taken alone or in view of Yamate 2018. Yamate 2020 further teaches that the polymer may be a homopolymer obtained by polymerizing one polymerizable compound represented by formula (I), or may be a polymer obtained by polymerizing two or more polymerizable compounds represented by formula (I) (Paragraph 0049), and given that formula (I) of Yamate 2020 reads upon and/or renders obvious both the claimed formula (I’) and the claimed formula (II’), the claimed invention as recited in instant claims 1-2 would have been obvious over the teachings of Yamate 2020, taken alone or in view of Yamate 2018, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 3-9, Yamate 2020 teaches that the adhesive composition comprising the polymer resin having repeating units as above (thus a “resin composition” as in instant claim 3), may further comprises a polymerizable compound other than the polymerizable compound of formula (I) and not as a copolymer component in polymer (I), with examples thereof including polyfunctional acrylates and acrylic polymerizable oligomers such as epoxy (meth)acrylate (Paragraphs 0054-0060) that may read upon the broadly claimed thermosetting resin as well as the broadly claimed “active ester-based compound”, and given that Yamate 2020 also teaches that the polymer is highly soluble in a resin (Paragraph 0008) with working examples dissolved in a thermosetting epoxy resin (Examples, Table 2) reading upon the resin of instant claims 4-6, the claimed invention as recited in instant claims 3-7 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018. With respect to instant claims 8-9, given that Yamate 2020 teaches that suitable polymerizable compounds include various (meth)acrylated oligomers including a (meth)acrylate of a polybutadiene oligomer as well as a vinyl compound such as styrene or butadiene (Paragraphs 0060-0061) and that the adhesive composition may be used by mixing it with an existing adhesive (Paragraph 0081), wherein the claimed resins as recited in instant claim 8 are obvious adhesive resins in the art, and that the claimed invention as recited in instant claim 9 does not positively recite that the resin composition comprises the polyphenylene ether compound which is recited as an alternative in claim 8 from which claim 9 depends, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the resins of instant claim 8, the claimed invention as recited in instant claims 8-9 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 10, Yamate 2020 teaches that a molded article can be obtained by applying the adhesive composition to a plastic substrate and curing the adhesive composition to form a film or coating film directly on the substrate (Paragraph 0083), and hence instant claim 10 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018.
With respect to instant claim 11, given that the adhesive/resin composition taught by Yamate 2020 is a capable of use “for an insulating layer of printed wiring boards” and that instant claim 11 does not provide any additional material or structural limitations to differentiate the claimed resin composition from the adhesive resin composition taught by Yamate 2020, alone or in view of Yamate 2018, instant claim 11 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018.
With respect to instant claim 12, Yamate 2020 teaches that the composition may further comprise an organic solvent (Paragraphs 0051-0053) and given that Yamate 2020 also teaches that the composition may be applied to a plastic substrate to form a coating film thereon that can be dried such as heat-dried after application (Paragraphs 0086 and 0089-0091), Yamate 2020 clearly teaches a “resin varnish” as instantly claimed. Hence, instant claim 12 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018.
With respect to instant claims 13-18, it is again noted that Yamate 2020 teaches that the adhesive resin composition may be applied to a plastic substrate to form a coating film thereon and then cured as discussed in detail above, wherein the Examiner notes that the cured coated substrate (consisting of the cured coating film and the substrate as the claimed “support film” of instant claims 14 and 16) is capable of functioning as an insulator for printed wiring boards, and that Yamate 2020 more particularly teaches that the adhesive resin composition may be utilized as a primer layer for a further-applied functional film such as a conductive film (Paragraphs 0092-0094) or as an adhesive layer for bonding a plastic substrate to another molded sheet such as a metal foil like a copper foil (Paragraphs 0100-0101) thereby reading upon and/or suggesting a metal-foil-attached laminate as in instant claim 18, the claimed invention as in instant claims 14, 16, and 18 would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018 given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success (Paragraphs 0092-0101). Further, with respect to instant claims 13, 15, and 17, although Yamate 2020 does not teach that the adhesive resin composition is impregnated into a base material to form a prepreg as in instant claim 13, Yamate 2020 does teach that the composition may comprise fibrous particles such as metal oxide particles like silicon dioxide and aluminum oxide particles having a fibrous shape (Paragraphs 0075-0076), and given that Yamate 2020 does not limit the amount of fibrous particles to be incorporated into the coating film such that an adhesive or coating layer comprising fibrous particles as in Yamate 2020 may be equated to a layer or “prepreg” formed by impregnating a bed of fibers or a fibrous mat as the claimed “base material” of instant claim 13, and further given that it is well established in the art that adhesive films may be provided with a fiber reinforcement for improved mechanical properties, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed prepreg of instant claim 13 as well as the “insulator” and metal foil-attached laminate of instant claims 15 and 17, respectively, would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
Double Patenting
Claims 1-18, as amended, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over amended claims 1-18, respectively, of copending Application No. 18/577516 (reference application) in further view of Yamate 2019 or Yamate 2020 for generally the reasons recited in the prior office action (and incorporated herein by reference) and restated below with respect to the amended claims.
As discussed in the prior office action, both applications are directed to a polymer comprising repeating units of similarly substituted diphenyl (meth)acrylamide compounds of similar and/or overlapping formulae (see claims 1-2 of each application), a resin composition thereof (see claims 3 and 11 of each application) including the same additional resins (see claims 4-9 of each application), a molded body comprising a cured product thereof (see each claim 10), a resin varnish thereof (see each claim 12), a prepreg thereof (see each claim 13), an adhesive film thereof (see each claim 14), an insulator consisting of a cured product of the prepreg or cured product of the adhesive film (see claims 15-16 of each application), and metal foil-attached laminates comprising a layer consisting of the above insulator and a layer consisting of a metal foil (see claims 17-18 of each application), wherein the difference between the applications is that the polymer of the copending claims has been amended to comprise “at least one repeating unit derived from a polymerizable compound of formula (I’)” which is similar to the claimed formula (I’) as amended except that X1 and X2 are C3 to C6 branched or cyclic, alkyl or alkoxyl groups, while the polymer of the instant claims as amended is derived from polymerizable compounds (I’) and (II’) with X1 and X2 of (I’) being selected from C7 to C20 alkyl or alkoxyl groups, and (II’) being distinct from (I’) and comprising benzyl substituent groups as opposed to the X1 and X2 of copending claim 1. However, given the similar chemical structures of the repeating units of the claimed polymer as in instant claims 1-2 and that of copending claims 1-2, wherein a C7 branched or cyclic alkyl group, or more generally a C7 alkyl group would have been obvious over the copending C6 branched or cyclic alkyl group given that a C7 alkyl is an obvious homolog to a C6 alkyl group (see MPEP § 2144.09), and that Yamate 2019 or Yamate 2020 teach similar polymerizable compounds or repeating units as in both applications, providing a clear teaching and/or suggestion that the claimed repeating units of formula (I’) and/or formula (II’) are functionally equivalent to the repeating units of formula (I’) of the copending application with Yamate 2019 teaching a broader range of substituents for the phenyl groups of C1 to C20 alkyl or alkoxyl groups (Paragraphs 0006-0009) encompassing the claimed alkyl/alkoxy groups of both the present and the copending applications, while Yamate 2020 specifically teaches the preference of longer chain C7 to C20 alkyl or alkoxy groups, as in the instant claims, over shorter C1 to C6 alkyl chains of known prior art, and as in the copending claims, which provide improved adhesive properties with respect to certain plastic substrates (Paragraphs 0002-0005, Examples), and with both Yamate 2019 and Yamate 2020 also teaching additional phenyl or benzyl substituents or organic groups as in the instantly claimed formula (II’), the Examiner again takes the position that instant claims 1-18 would have been obvious over copending claims 1-18, respectively, in view of Yamate 2019 or Yamate 2020, given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8, and 10-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/840604, taken alone or in view of Yamate 2020, for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, copending claim 1 is directed to a thermosetting resin composition comprising a compound (B) reading upon the instantly claimed thermosetting resins of instant claim 8 with respect to the resin composition of instant claims 3-5, and at least one polymerizable compound of formula (I) which may read upon the instantly claimed polymerizable compounds (I’) and (II’) as repeating units of the instantly claimed polymer of instant claim 1, with the polymerizable compound of copending claim 3 more particularly reading upon the instantly claimed compounds (I’) and (II’) as repeating units of the polymer of instant claim 2, and given that the use of a curable polymer or prepolymer of a polymerizable compound for a thermosetting resin composition would have been obvious over the polymerizable compound itself in the thermosetting resin composition, and vice versa, particularly in view of Yamate 2020 which as discussed in detail above, and incorporated herein by reference, teaches a resin composition comprising a similar polymer derived from similar polymerizable compounds wherein the composition may further comprise other polymerizable compounds, the Examiner takes the position that the claimed polymer and resin composition thereof as recited in instant claims 1-5 and 8 would have been obvious over copending claim 1 or copending claim 3 taken alone or in view of Yamate 2020 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. Similarly, the resin composition for an insulating layer of a printed wiring board of instant claim 11 would have been obvious over the resin composition for the insulating layer of a printed wiring board of copending claim 5 or 13, the resin varnish of instant claim 12 obvious over the resin varnish of copending claim 6 or 14, the prepreg of instant claim 13 obvious over the prepreg of copending claim 7 or 15, and the adhesive film of instant claim 14 over the adhesive film of copending claim 8 or 16, for the same reasons as discussed above with respect to the resin composition of instant claim 3 over the resin composition of copending claim 1, or copending claim 2 which includes a polymerization initiator for polymerizing the polymerizable compound, each taken alone or in view of Yamate 2020. Further, with respect to instant claim 10 directed to a molded body comprising a cured product of the resin composition of instant claim 3, given that the cured product of copending claim 4 or copending claim 12 would comprise a polymer of the polymerizable compound of the resin composition of copending claim 1 or copending claim 2, respectively, instant claim 10 would have been obvious over the cured product of copending claim 4 or 12. With respect to instant claims 15 and 16, given that a cured product of the prepreg of copending claim 7 or 15 comprising the thermosetting resin, and a cured product of the adhesive film of copending claim 8 or 16 comprising the thermosetting resin would have been obvious to one having ordinary skill in the art, wherein the cured product would comprise a polymer of the polymerizable compound, instant claims 15 and 16 would have been obvious over copending claim 7 or 15, and copending claim 8 or 16, respectively, given that said cured product would be capable of use as an “insulator for printed wiring boards”. Lastly, with respect to instant claims 17 and 18, given the claimed laminate with metal foil of copending claim 10 or 18 which includes a layer of a cured product of the thermosetting resin composition according to copending claim 1 or 2, wherein the incorporation of a fibrous reinforcement (e.g. as in a prepreg as in instant claims 13 and 15 from which instant claim 17 depends) or a support film or additional cured layer as a “support film” to provide mechanical support to the resin composition or cured layer (e.g. as in instant claim 14 and 16 from which instant claim 18 depends), the metal foil-attached laminate of instant claim 17 or 18 would have been obvious over the metal foil laminate of copending claim 10 or 18 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive and/or moot with respect to the obviousness rejections over the cited prior art references as presented above with respect to the amended claims. More specifically, the Applicant first notes that “[a]s evident from the claims amendments, the polymer of the claims is a copolymer comprising a repeating unit derived from a polymerizable compound of formula (I’) and formula (II’)”, stating that the “(meth)acrylamide-based polymer of the claims has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and exhibits high solubility in organic solvents and high compatibility with thermosetting resins” (see the paragraph bridging pages 7-8 of the response). The Applicant also notes that “[a]s shown by comparative examples in the disclosure (see Table 1), the homopolymers of formula (I’) and formula (II’) do not have good properties in all of the dielectric constant, the dielectric loss tangent, the glass transition point, and the solubility in organic solvents and compatibility with thermosetting resins. The Applicant then argues that with respect to the obviousness rejection over Yamate 2019 directed to an adhesive composition comprising a copolymer of Y-N(Ar)(R) and a (meth)acryl ester or (meth)acrylamide, Yamate 2019 allegedly “does not describe that a phenyl group in Y-N(Ar)(R) can be substituted with a C7 or more alkyl group or C7 or more alkoxy group as recited in the claims herein” and does not describe “that the compound of formula (II’) can be used as the (meth)acryl ester or (meth)acrylamide,” arguing that although N,N-bis(4-octylphenyl)acrylamide and N,N-bis(4-octylphenyl)methacrylamide in which the carbon number is more than 7 are exemplified, “since N,N-diphenyl acrylamide and N,N-diphenyl methacrylamide have no substituent on a phenyl group, the carbon number of the substituent on a phenyl group does not always need more than 7” (see page 8 through the first two lines of page 9). The Applicant then argues that although N,N-bis[4-(α,α-dimethylbenzyl) phenyl]acrylamide or N,N-bis[4-(α,α-dimethylbenzyl)phenyl]methacrylamide is described as a preferable monomer of formula (I), “it is [allegedly] not suggested that either of these compounds should be used as a co-monomer of a polymer,” arguing that since a (meth)acryl ester or (meth)acrylamide is used as a co-monomer in Yamate 2019, there is allegedly no teaching or motivation or rationale given to use N,N-bis[4-(α,α-dimethylbenzyl)phenyl] (meth)acrylamide as a co-monomer. However, the Examiner respectfully disagrees and again notes that Yamate 2019 clearly teaches exemplified monomers or polymerizable compounds for the repeating units of the copolymer reading upon both the claimed formula (I’) and formula (II’), including an alkyl group of C7 to C20 as in the claimed formula (I’), thereby clearly teaching and/or suggesting the use of such exemplified polymerizable compounds as co-monomers utilized to produce the copolymer; and given that Yamate 2019 does not specifically limit the (meth)acrylamide compound or co-monomer to be utilized as the repeating B unit(s) in combination with the polymerizable compound of Formula (I) as the repeating unit A as taught by Yamate 2019; nor limit the repeating unit A to just one type of polymerizable compound represented by Formula (I), particularly those as specifically exemplified by Yamate 2019 and reading upon the claimed formula (I’) or formula (II’); nor limit the copolymer to just one type of unit A and one type of unit B and instead clearly teaches and/or suggests that the copolymer may include more than one repeating unit of a particular type and may further include additional repeating units (Paragraphs 0008-0019 and 0026), the Examiner maintains her 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 select from any of the suitable polymerizable compounds taught by Yamate 2019 alone or in any combination thereof for the repeating unit(s) A and/or B of the copolymer of Yamate 2019.
The Applicant also argues that Yamate 2019 is directed to an adhesive composition and that “it is not described in Yamate 2019 that the adhesive composition is suitable for an insulator for printed wiring boards” referring to “several dependent claims in this regard” and further arguing, “In sum, Yamate 2019 does not teach or suggest the polymer in claim 1, and nor does Yamate 2019 give any expectation of the significantly advantageous effects demonstrated thereby in the specification” (see page 9 through the first line of page 10). However, the Examiner first notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In response to Applicant's argument that the reference fails to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., low dielectric constant, low dielectric loss tangent, high glass transition point, high solubility in organic solvents, and high compatibility with thermosetting resins as recited at the top of page 8 of the response) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is also noted that Applicant’s arguments with respect to an “insulator for printed wiring boards” rely on language recited in the preamble of instant claims 15-16 and/or are based upon recitations of the intended end use of the cured product of the resin composition as in instant claims 15-18, and given that a recitation of an intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, and that the adhesive resin composition taught by Yamate 2019 is capable of the same intended end use, Applicant’s arguments with respect to Yamate 2019 not describing that “the adhesive composition is suitable for an insulator for printed wiring boards” are not persuasive. Further, given that the Applicant fails to provide any clear showing of unexpected results over the teachings of Yamate 2019, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Yamate 2019.
With respect to Yamate 2020, the Applicant argues that “[i]n the claims of this application, the co-monomer is specified to be the compound of formula (II’) such as N,N-bis[4-(alpha-alpha-dimethyl)benzyl]phenyl]acrylamide [sic]” while in contrast, Yamate 2020 teaches specific examples of the polymerizable compound other than the polymerizable compound represented by formula (I) wherein (meth)acrylamide, dimethyl(meth)acrylamide, diethyl(meth)acrylamide, (meth)acryloylmorpholine, hydroxyethyl(meth)acrylamide, and isopropyl (meth)acrylamide are exemplified, arguing that “[h]owever, diphenyl (meth)acrylamide is not exemplified in Yamate 2020”, and “[s]o of course, N,N-[4,4’-bis(benzyl)diphenyl] acrylamide is not exemplified” (see pages 10-11 of the response). The Applicant argues that “in the examples of Yamate 2020, only poly[N,N(bis(4-(1,1,3,3-tetramethyl butyl)phenyl)acrylamide] is used, but, the copolymer with any (meth)acrylamides is not used, and that “[a]dditionally, though unusual (meth)acrylamides such as N,N-[4,4’-bis(benzyl)diphenyl] acrylamide and N,N-[4,4’-bis(α,α-dimethylbenzyl)diphenyl] acrylamide are known from Yamate 2018 (WO2018/70079), one of ordinary skill in the art [allegedly] does not have a reason or rationale to use these unusual compounds” and “[a}ccordingly, in view of Yamate 2020, one of ordinary skill in the art [allegedly] would not find it obvious to use the compounds of formula (II’) of the claims as a co-monomer” (see page 11 of the response). However, the Examiner respectfully disagrees and again notes that Yamate 2020 clearly teaches that the polymer may be a polymer obtained by polymerizing two or more polymerizable compounds represented by formula (I), and given that formula (I) of Yamate 2020 reads upon and/or renders obvious the claimed formula (I’) as well as the claimed formula (II’), and that the prior art reference is not limited to the exemplified compounds nor the working examples, but must be taken as a whole when assessing the patentability of claims, Applicant’s arguments with respect to the copolymer and the “unusual” (meth)acrylamides as comonomer are not persuasive.
The Applicant further notes that “the (meth)acrylamide-based polymer of the claims has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and exhibits high solubility in organic solvents and high compatibility with thermosetting resins” and that “[t]herefore, the polymer is suitable to an insulator for printed wiring boards, which [allegedly] represents significant and unexpected advantages over products taught or suggested by the prior art” (see page 11, lines 18-22). The Applicant argues that “[r]egarding the high solubility in organic solvents and the high compatibility with thermosetting resins, examples within the claims’ scope show the excellent solubility to organic solvents such as MEK, toluene, cyclohexanone, and show the excellent compatibility to three kinds of epoxy resins and polyphenylene ether- oligomer (see, e.g., Table 1 in the specification),” while “[i]n contrast, and to the contrary, in Yamate 2020, by using the adhesive composition comprising the polymer, the coating that is excellent to the adhesiveness to the plastic base material, especially, a polyolefin such as poly-cycloolefin, polyethylene, polypropylene, etc. can be obtained” and that although Yamate 2020 describes that the coating can be laminated with functional layers, “it is not described that the resin of Yamate 2020 is suitable for printed wiring boards (see several dependent claims in this regard)” and “the excellence to the adhesiveness to the polyolefin base material in Yamate 2020 is not related to the dielectric constant, the dielectric loss tangent, the glass transition point, the solubility in organic solvents and the compatibility with thermosetting resins” (see pages 11-12 of the response). The Applicant also argues that Yamate 2020 provides test examples wherein the solubility in organic solvents and the compatibility with epoxy resin are tested, but that in such tests, the homopolymer of formula (II’) of poly[N,N(bis(4-(1,1,3,3-tetramethylbutyl)phenyl) acrylamide] is tested and that from said test of said homopolymer, “one of ordinary skill in the art [allegedly] would have no ability to estimate the effect of a copolymer of N,N(bis(4-(1,1,3,3-tetramethylbutyl)phenyl) acrylamide and N,N-[4,4’-bis(α,α-dimethylbenzyl)diphenyl] acrylamide and thereby [allegedly] would lack a reasonable expectation of success” (see page 12, lines 9-15). However, the Examiner respectfully disagrees and again notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In response to Applicant's argument that the reference fails to show certain features of the invention, it is again noted that the features upon which Applicant relies (i.e., low dielectric constant, low dielectric loss tangent, high glass transition point, high solubility in organic solvents, and high compatibility with thermosetting resins) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is also noted that Applicant’s arguments with respect to an “insulator for printed wiring boards” rely on language recited in the preamble of instant claims 15-16 and/or are based upon recitations of the intended end use of the cured product of the resin composition as in instant claims 15-18, and given that a recitation of an intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, and that the resin composition taught by Yamate 2020 is capable of the same intended end use, Applicant’s arguments with respect to Yamate 2020 not describing that the resin composition “is suitable for an insulator for printed wiring boards” are not persuasive. Further, given that the Applicant fails to provide any clear showing of unexpected results over the teachings of Yamate 2020, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018.
With respect to the secondary reference to Yamate 2018, which is alternatively utilized by the Examiner to support the position that the claimed benzyl and α,α-dimethylbenzyl groups of formula (II’) would have been obvious based upon the teachings of Yamate 2020 with respect to the polymerizable compounds of formula (I), the Applicant appears to argue the secondary reference separately on pages 12-13, noting that although the reference describes that a co-monomer can be used, a (meth)acrylamide is not exemplified as a co-monomer, however, the Examiner notes that Yamate 2018 was not relied upon with respect to utilizing a co-monomer given that Yamate 2020 alone provides a clear teaching that the polymer may be a copolymer obtained by polymerizing two or more polymerizable compounds represented by formula (I), and hence, Applicant’s arguments are pages 12-13 are not persuasive, and the Examiner maintains her position that absent any clear showing of unexpected results, the claimed invention would have been obvious over the teachings of Yamate 2020 taken alone or in view of Yamate 2018.
With respect to the obviousness-type double patenting rejections, as requested by the Applicant, the provisional rejections as restated above with respect to the amended claims are being held in abeyance.
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 2/13/2026.
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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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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