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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/25/2026 has been entered.
The amendment filed 8/25/2026 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 Objections
Claim 1 is objected to because of the following informalities: “or” on line 26, recited before the last branched C7 to C9 alkyl group in the Markush group should read “and” given the “selected from the group consisting of” recitation on line 6. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-18 are rejected 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. The terms “low dielectric constant” and “low dielectric loss tangent” as well as “high glass transition point”, “high solubility”, and “high compatibility” in claim 1 are relative terms which render the claims indefinite. The term “low” is not defined by the claim with respect to the dielectric constant (Dk) and/or dielectric loss tangent (Df), the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Similarly, the term “high” is not defined by the claim with respect to the glass transition point (Tg), the solubility in organic solvents, and the compatibility with thermosetting resins, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In looking to the specification for guidance, it is noted that although the Examples discuss how the Tg, Dk, and Df are measured as well as how the solubility in organic solvents and compatibility with thermosetting resins are determined, with a rating of “Good” for both solubility and compatibility given when the “resin solution had fluidity and was transparent” and Fair for both when the “resin solution had fluidity but was cloudy” but “Bad” when the “resin solution had no fluidity, and the resin was not dissolved at all” (see Paragraphs 0161-0164), the specification including the Examples fails to clearly recite and/or define what is considered a “low” dielectric constant and/or a “low” dielectric loss tangent (versus an average or high dielectric constant or average/high dielectric loss tangent); and/or what is considered a “high” Tg versus a “low” Tg or at what temperature is the Tg no longer considered “high”. Similarly, the specification fails to clearly recite what is considered “high solubility in organic solvents” and “high compatibility with thermosetting resins” and whether these properties are only exhibited with respect to specific solvents and/or specific thermosetting resins, and under what conditions, e.g., only those as recited in the Examples section? Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement
Dependent claims 2-18 do not remedy the above and hence are indefinite for the same reasons.
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 respect to the amended claims.
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 such as a t-butyl group (a branched alkyl) or n-octyl group (a linear C8 alkyl), 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., similar to the instantly claimed formula (I’) except the X1 and X2 are each a straight C8 alkyl group as opposed to a branched C8 alkyl group), and N,N-bis[4-(α,α-dimethylbenzyl)phenyl] (meth)acrylamide (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 a C8 alkyl-substituted phenyl group; 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); and that the resulting copolymer has excellent solubility in various solvents and resins, particularly organic solvents and a thermosetting resin as utilized in the Examples (as instantly claimed; Paragraphs 0007, 0073, Examples). Hence, given that Yamate 2019 specifically teaches exemplified polymerizable compounds for the repeating units of the copolymer that read upon and/or render obvious 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 (e.g., more than one polymerizable compound represented by formula (I)), the Examiner again 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, wherein one skilled in the art would have been motivated to determine the optimum contents of each monomer to provide a copolymer having the desired properties for a particular end use such as excellent solubility in various organic solvents and thermosetting resin(s) as specifically taught by Yamate 2019, as well as desired thermal (Tg) and/or electrical (dielectric) properties wherein given that said properties result from a given polymer structure, the instantly claimed “relative” properties would have been obvious over the teachings of Yamate 2019, particularly given the lack of clarity of the claimed “relative” properties as discussed above.
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, 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):
PNG
media_image1.png
237
450
media_image1.png
Greyscale
“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 (as in instant claim 1) 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 as the C7 to C20 alkyl group, both a linear C7 to C20 alkyl group and a branched C7 to C20 alkyl group may be preferably used (Paragraph 0013), wherein “[a]s the branched C7 to C20 alkyl group, “a 1,1,2,2-tetramethylpropyl group, a 1,1,3-trimethylbutyl group, an 1-ethylpentyl group, a 1,1,3,3-tetramethylbutyl group, a 2,2,3,3-tetramethylbutyl group, a 1,2,4-trimethylpentyl group, a 2,4,4-trimethylpentyl group, a 2,2,4-trimethylpentyl group, an 1-ethyl-4-methylpentyl group, an 3-ethyl-3-methylpentyl group, an 3-ethyl-4-methylpentyl group, an 1-ethyl-1-methylpentyl group, a 1,1-dimethylhexyl group, a 3,3-dimethylhexyl group, a 4,4-dimethylhexyl group, an 2-ethylhexyl group, an 3-ethylhexyl group, a 6-methylheptyl group, a 1,3,5-trimethylhexyl group, a 1,1,3-trimethylhexyl group” and a 1-methylheptyl group (each as recited in instant claim 1) are exemplified (Paragraph 0015, thus rendering the claimed formula (I’) obvious over Yamate 2020). Yamate 2020 also teaches that the organic group for each R (if present) 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 of formula (I) recited in Paragraph 0034 including N,N-bis(4-octylphenyl) acrylamide (e.g., similar to the instantly claimed formula (I’) of instant clams 1-2 except X1 and X2 are each a linear C8 alkyl group versus a branched C8 alkyl such as one of the exemplified branched C8 alkyl groups above) and similarly N-(4-octylphenyl)-N-phenyl(meth)acrylamide (which also is similar to the instantly claimed formula (I’) as above but when 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 Examiner again takes the position that 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 that the polymer has high solubility in a solvent or a resin (Paragraph 0008), particularly organic solvents and a thermosetting resin as in the working examples (Examples, Paragraphs 0113-0127); and given that formula (I) of Yamate 2020 reads upon and/or renders obvious both the claimed formula (I’) and the claimed formula (II’) as noted above, the Examiner again takes the position that 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, wherein one skilled in the art would have been motivated to determine the optimum contents of each monomer to provide a polymer having the desired properties for a particular end use such as excellent solubility in various organic solvents and thermosetting resin(s) as specifically taught by Yamate 2020, as well as desired thermal (Tg) and/or electrical (dielectric) properties wherein given that said properties result from a given polymer structure, the instantly claimed “relative” properties would have been obvious over the teachings of Yamate 2020, particularly given the lack of clarity of the claimed “relative” properties as discussed above.
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 amended claim 1 of both applications now recites that the polymer has “low dielectric constant”, “low dielectric loss tangent”, “high glass transition point” and “exhibits high solubility in organic solvents”, such that 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 alkyl 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 C9 branched alkyl groups, and (II’) being distinct from (I’) and comprising benzyl substituent groups as opposed to the X1 and X2 of copending claim 1, and further has “high compatibility with thermosetting resins”. 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 alkyl group as instantly claimed would have been obvious over the copending C6 branched 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 groups of both the present and the copending applications, while Yamate 2020 specifically teaches the preference of longer chain C7 to C20 alkyl 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’) and that the resulting polymer has high compatibility with thermosetting resins (as discussed above and incorporated herein by reference), 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 1-2, 4-10, and 12-18 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 (II) which may read upon the instantly claimed polymerizable compounds (I’) and (II’) as repeating units of the instantly claimed polymer of instant claims 1-2, 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 and having similar solubility properties as claimed (Examples), 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 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, wherein the resulting (relative) properties would have been obvious to one skilled in the art based upon the resulting polymer and the lack of clarity of the claimed “relative” properties as discussed in detail above. 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 8/25/2026 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.
As an initial item, the Applicant describes the Examples in the present disclosure and states that “[s]ince the scope of compounds of formula (I’) and compounds of formula (II’) are very close to the compounds used in the examples, one or [sic] ordinary skill in the art would [allegedly] expect that the same or similar properties would be obtained” and that “[a]s a result, the polymer having the properties described in claim 1 is preferable to an insulator for printed wiring boards” (see page 9, “The Examples in the Disclosure” section). The Applicant recites that “[a]s describe [sic] at paragraph 0006, since dielectric property and heat resistance are a physical property inversely proportional to solubility in organic solvents and compatibility with thermosetting resins, it has been very difficult to achieve all of the above physical properties at the same time,” noting that “as shown by the comparative example, the homopolymer of formula (I’) or formula (II’) can’t have all of the dielectric constant, the dielectric loss tangent, the glass transition point, and the solubility in organic solvents and compatibility with thermosetting resins as recited in the claims herein” but that “[h]owever, unexpectedly, applicants have found that by using the above copolymer of the claims, all of the above significantly improved physical properties are obtained” (see page 9, “The Examples in the Disclosure” section). However, the Examiner notes, as discussed in detail above, that the claimed “low dielectric constant”, “low dielectric loss tangent”, “high glass transition point”, “high solubility in organic solvents” and “high compatibility with thermosetting resins” are relative terms/properties that are not clearly defined by the claims nor the specification. It is also noted that the claimed polymer is not limited to a copolymer having repeating units derived from a compound of formula (I’) and a compound of formula (II’) given that instant claim 1 recites, “A polymer comprising: a repeating unit derived from a polymerizable compound of formula (I’)…and a repeating unit derived from a polymerizable compound of formula (II’)” (emphasis added), and the original disclosure clearly recites that the polymer of the invention “is a polymer consisting of at least one repeating unit derived from a polymerizable compound of the following formula (I) and at least one repeating unit derived from a polymerizable compound of formula (II), or a polymer consisting of at least one of each of the repeating units and at least one repeating unit derived from another radically polymerizable compound” (emphasis added, see Paragraph 0037 of the specification as filed). Hence, contrary to Applicant’s statement above, one of ordinary skill in the art would not necessarily “expect that the same or similar [relative] properties would be obtained” for the instantly claimed polymer as in the Examples, especially given that for at least Comparative Example 2: a) the Tg is actually higher than inventive Examples 3-4 and 8; b) the Dk and Df values are not much different than the values for the inventive examples and would still be considered “low” values to one skilled in the art; c) the solubility is “Good” for each of the three organic solvents tested; and d) the compatibility with thermosetting resins is “Good” for at least the YD-128 bisphenol A epoxy resin, the jER154 phenol novolac epoxy resin, and the 2021P alicyclic celoxide epoxy resin, and only considered “Fair” for the SA9000 methacrylated polyphenylene ether oligomer at both end, which alone is not an indication that the polymer of Comparative Example 2 does not “have high compatibility with thermosetting resins” as required by instant claim 1 given that the instant claims do not require a specific degree of “high” compatibility with all four of the thermosetting resins tested, nor is it clear that a “Fair” rating for one of the tested thermosetting resins would equate to a less than “high” compatibility given that inventive Example 3 has only a “Fair” compatibility with two of the four tested thermosetting resins (e.g., worse results than Comparative Example 2) and inventive Example 4 has only a “Fair” compatibility with one of the four tested thermosetting resins, e.g., similar to Comparative Example 2, with both inventive Examples 3 and 4 exhibit a “Fair” solubility in MEK while Comparative Example 2 exhibit a “Good” solubility to MEK such that overall, Comparative Example 2 appears to provide comparable or better properties than inventive Examples 3 and 4, particularly better solubility and compatibility properties than inventive Examples 3 and 4. Hence, Applicant’s remarks or arguments that “unexpectedly, applicants have found that by using the above copolymer of the claims, all of the above significantly improved physical properties are obtained” not only are unpersuasive but also appear to be unsupported by Applicant’s own data.
With respect to the obviousness rejection over Yamate 2019 (WO2019/198792A1), the Applicant argues that Yamate 2019 “describes an adhesive composition comprising a copolymer of Y-N(Ar)(R) and a (meth) acryl ester or (meth)acrylamide” and that in “Y-N (Ar)(R) of Yamate 2019, when both Ar and R are a phenyl group, the polymer of the present invention and Yamate 2019 are common” but that “[h]owever, selecting a branched C7 to C9 alkyl group as the substituents on the phenyl group is [allegedly] not taught or suggested” and that “[i]n Yamate 2019, there is [allegedly] no such motivation and suggestion” (see “Regarding Yamate 2019 (WO2019/198792)” section on page 9 through the first full paragraph on page 10). The Applicant also argues that “though a (meth) acryl ester or (meth)acrylamide is used as a co-monomer, one [allegedly] would not have a reason to select the compound of formula (II’) among many (meth) acryl esters and (meth)acrylamides as there is [allegedly] no motivation or suggestion for doing so” in Yamate 2019. However, the Examiner respectfully disagrees given that Yamate 2019 clearly teaches that of the possible structures for Y-N(Ar)(R), three different (meth)acrylamide structures are preferred, namely N,N-diphenyl(meth)acrylamide (with no substituents on the two phenyl groups), N,N-bis(4-octylphenyl)(meth)acrylamide (e.g., similar to the claimed formula (I’) except with straight C8 alkyl groups instead of branched C8 alkyl groups although Yamate 2019 clearly teaches and/or suggests that the C1 to C20 alkyl substituent group may be linear or branched in light of the examples thereof as recited in Paragraph 0010), and 4,4-bis N,N-bis[4-(α,α-dimethylbenzyl)phenyl] (meth)acrylamide (reading upon formula (II’) of instant claim 1), and given that Yamate 2019 does not limit the copolymer to just two monomers of one A and one B, and instead clearly teaches and/or suggests that the copolymer may also have a repeating unit derived from another polymerizable compound and/or may have repeating units of more than one A compound and/or more than one B compound, Applicant’s arguments that Yamate 2019 provides no motivation or suggestion for selecting a branched C7 to C9 alkyl group as a substituent on the phenyl group and no motivation or suggestion of selecting a compound of the claimed formula (II’) among the (meth)acryl esters and (meth)acrylamides are not persuasive.
The Applicant also argues that Yamate 2019 teaches that the adhesive composition is described as having excellent adhesion to a plastic base material, and that although the examples of Yamate 2019 exhibit high solubility in organic solvents and compatibility with epoxy resin, the polymer of the instant 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” such that “[a]s a result, the polymer having such properties is preferable for an insulator for printed wiring boards,” arguing that “[t]hough a high solubility in organic solvents and a high compatibility with thermosetting resins are common with Yamate 2019, the properties of a low dielectric constant, a low dielectric loss tangent and a high glass transition point necessary for an insulator for printed wiring boards are not taught in Yamate 2019” (see page 10 of the response). The Applicant then concludes that “[t]hough, Yamate 2019 may very generically encompass polymers including the copolymer of the claims due to its highly generic teachings, there is [allegedly] no motivation and suggestion to select both the compounds of formula (I’) and to produce the copolymer with the compounds of formula (II’),” noting that “the test for obviousness is not what may be broadly encompassed by a prior art teaching, but rather what would be obvious in view thereof due to some reason, motivation or teaching to proceed in a way that results in the claims, which [allegedly] is not the situation herein,” arguing further that “since the purpose of Yamate 2019 is [allegedly] different from the purpose of this application, one would have no reason or rationale to proceed in a way to achieve the claims herein in view of Yamate 2019” (“Conclusion” section on pages 10-11). However, the Examiner respectfully disagrees and again notes that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and also prima facie obviousness to combine equivalents known for the same purpose as well as to substitute equivalents known for the same purpose (see MPEP § 2144.06), and given that the instant claims do not require any specific “low dielectric constant” and/or “low dielectric loss tangent” and/or “high glass transition point” such that said properties are relative as discussed in detail above, and that the Applicant provides no clear showing of unexpected results with respect to the claimed invention over the teachings of Yamate 2019, Applicant’s arguments are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Yamate 2019, especially given that the polymer and adhesive resin composition taught by Yamate 2019 is capable of the same intended end use, e.g., as an insulator for printed wiring boards.
With respect to Yamate 2020, the Applicant argues that “[i]t is described in claim 1 of Yamate 2020 that an adhesive composition comprising a polymer derived from the compound of formula (I)” with X1 and X2 each independently representing a C7 to C20 alkyl group or a C7 to C20 alkoxy group, and “[i]t is described at paragraph 0022 that the polymer may be a copolymer with a (meth)acrylamide, etc.” and although “Yamate 2019’s [assumed to mean “Yamate 2020’s”] polymers share the compound of formula (I’) as a starting compound,” the Applicant argues that the compound of formula (II’) is selected as a comonomer, while at the same time any polymerizable compounds can be used as a comonomer in Yamate 2020” with a (meth)acrylamide being one of them (see page 10 through the paragraph bridging pages 10-11). The Applicant then argues that “[s]electing the compound of formula (II’) and producing the copolymer with the compound of formula (I’) is [allegedly] without a motivation or suggestion by this reference,” arguing that in Yamate 2020, there is allegedly no such motivation and suggestion. However, the Examiner respectfully disagrees and again notes that Yamate 2020 clearly teaches that the copolymer may be a polymer obtained by polymerizing two or more polymerizable compounds represented by formula (I) (Paragraph 0049), such that Applicant’s arguments with respect to a generic (meth)acrylamide being the comonomer of Yamate 2020 are not persuasive, and given further that the instant claims are not limited to a copolymer of just a repeating unit derived from a compound of formula (I’) with a repeating unit derived from a compound of formula (II’), Applicant’s arguments with respect to selecting a compound of formula (II’) and producing the copolymer with the compound of formula (I’) are not persuasive. The Applicant also argues, similar to the arguments above over the teachings of Yamate 2019, that Yamate 2020 is directed to an adhesive composition having excellent adhesion to a plastic base material and that although the examples of Yamate 2020 exhibit solubility in organic solvents and compatibility with epoxy resin, the polymer of the instant 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” such that “[a]s a result, the polymer having such properties is preferable for an insulator for printed wiring boards,” arguing that “[t]hough a high solubility in organic solvents and a high compatibility with thermosetting resins are common with Yamate 2020, the properties of a low dielectric constant, a low dielectric loss tangent and a high glass transition point necessary for an insulator for printed wiring boards are not taught or suggested by Yamate 2020, and [allegedly] nor would one expect them in view of the disclosure of this reference” (see page 12 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 over Yamate 2020 are not persuasive, especially given that the polymer or adhesive resin composition taught by Yamate 2020 is capable of the same intended end use, and that the instant claims do not require any specific “low dielectric constant” and/or “low dielectric loss tangent” and/or “high glass transition point” such that said properties are relative as discussed in detail above.
With respect to Applicant’s arguments over Yamate 2018 on page 13 of the response, the Examiner notes that the Applicant appears to be arguing the reference separately and not as presented in the obviousness rejection over Yamate 2020 in view of Yamate 2018. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Hence, given that Yamate 2018 was utilized by the Examiner as a supporting reference teaching a similar adhesive composition to Yamate 2020 comprising a 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, Applicant’s arguments over Yamate 2018 separately are not persuasive.
With respect to the obviousness-type double patenting rejections, as noted above, the provisional rejections have been maintained by the Examiner as presented above with respect to the amended claims, and as noted by the Applicant in the response, will be attended to once allowable matter has been identified.
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 8/25/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yuki (USPN 4,554,323) discloses a polymerizable, optically active polymer produced from (meth)acryloyl monomers including alkyl-substituted N,N-diphenyl acrylamides.
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.
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, Callie Shosho can be reached at 571-272-1123. 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.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights