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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19-20 have been canceled. 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 § 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” and “high solubility” 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) and the solubility in organic solvents, 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 and how the solubility in organic solvents is determined, with a rating of “Good” for solubility when the “resin solution had fluidity and was transparent” and Fair for 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 0144-0146), 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 whether the “high solubility” is only exhibited with respect to specific solvents, 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 2019 (WO2019/198792A1, again please refer to the machine translation for the below cited sections), 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, Yamate 2019 teaches an adhesive composition comprising a copolymer having repeating units derived from an N,N-diphenylacrylamide compound and a repeating unit derived from at least one polymerizable compound selected from a (meth)acrylic acid ester and a (meth)acrylamide, wherein the N,N-diphenylacrylamide compound has a formula of Y-N(Ar)(R) with Y representing a polymerizable functional group such as an acryloyl or methacryloyl group (as in instant claim 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; 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 (encompassing the instantly claimed C3 to C6 branched 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 including a t-butyl group (i.e., a C3 to C6 branched alkyl group as instantly claimed), with Yamate 2019 further teaching that preferred polymerizable compounds represented by formula (I) include N,N-diphenyl(meth)acrylamide (e.g., with no substituent groups on the two phenyl rings), N,N-bis(4-octylphenyl) (meth)acrylamide (e.g., with a linear C8 alkyl group on each phenyl ring) and N,N-bis[4-(α,α-dimethylbenzyl)phenyl] (meth)acrylamide (e.g., a branched structure similar to a “bulky” t-butyl structure but with a phenyl group in place of one methyl group at each terminus and thus also a “bulky” substituent; Entire document, particularly Paragraphs 0006-0014). Yamate 2019 also teaches that the resulting copolymer has excellent solubility in various solvents, particularly organic solvents as in the working examples (Paragraphs 0007 and 0073, Examples). Hence, Yamate 2019 teaches a polymer comprising at least one repeating unit derived from a polymerizable compound reading upon the claimed formula (I’) as recited in instant claims 1-2 wherein the polymer has excellent solubility in various organic solvents as instantly claimed, and although Yamate 2019 does not specifically teach that the polymer has a “low dielectric constant” and a “low dielectric loss tangent” and “a high glass transition point” as recited in instant claim 1, given that said (relative) properties are the result from a given polymer structure, wherein Yamate 2019 clearly teaches and/or suggests a polymer having the same repeating unit(s), the Examiner takes the position that the instantly claimed polymer of instant claims 1-2 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, and given the lack of clarity of the claimed “relative” properties as discussed in detail 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 2018 (WO2018/070079A1, again 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 incorporated herein by reference) and restated below with respect to the amended claims.
As discussed in the prior office action, Yamate 2018 teaches an adhesive composition comprising a polymer having repeating units derived from a polymerizable compound of formula (I) of Y-N(Ar)(R), “wherein Ar represents an unsubstituted or substituted C6 to C14 aryl group or an unsubstituted or substituted C6 to C10 aryl C1 to C3 alkyl group; R represents an unsubstituted or substituted C1 to C6 alkyl group, an unsubstituted or substituted C3 to C6 cycloalkyl group, an unsubstituted or substituted C6 to C14 aryl group, or an unsubstituted or substituted C6 to C10 aryl C1 to C3 alkyl group; and Y represents a polymerizable functional group, wherein a substituent on Ar and a substituent on R can bond to form a divalent organic group” (Abstract, Claim 1). Yamate 2018 teaches that the Y is preferably an acryloyl group or a methacryloyl group (Paragraph 0042, as in instant claim 2), and that as the “substituent” in “unsubstituted or substituted”, specific examples include a halogeno group, a hydroxy group, a C1 to C6 alkyl group (encompassing the instantly claimed C3 to C6 branched alkyl group), a C1 to C6 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 (Paragraph 0027) or more particularly, those as recited in Paragraphs 0028-0038 including a t-butyl group (i.e., a C3 to C6 branched alkyl group as in instantly claimed) as recited in Paragraph 0029, with Yamate 2018 further teaching that preferred polymerizable compounds represented by formula (I) include N,N-diphenyl(meth)acrylamide (e.g., with no substituent groups on the two phenyl rings) as in working Example 1 (Paragraphs 0023-0043, Example 1). Yamate 2018 also teaches working examples comprising poly(N,N-di-p-tolylacrylamide) (Example 2, e.g., with a C1 alkyl substituent group on each phenyl ring), poly(N,N-Di-4-methoxyphenyl acrylamide) (Example 3, e.g., with a C1 alkoxy substituent group on each phenyl ring), poly(N-acryloyl dihydroacridine) (Example 4, with an alkyl substituent group forming a ring structure connecting the two phenyl groups), poly(N-acryloyliminodibenzyl) (Example 5, an alkyl substituent group forming a ring structure connecting the two phenyl groups) and poly{N,N-[4,4′-Bis(α,α-dimethylbenzyl) diphenyl]acrylamide} (Example 12, e.g., a branched structure similar to a “bulky” t-butyl structure but with a phenyl group in place of one methyl group at each terminus and thus also a “bulky” substituent). Hence, Yamate 2018 teaches a polymer comprising at least one repeating unit derived from a polymerizable compound reading upon the claimed formula (I’) as recited in instant claims 1-2 thereby rendering the claimed polymer of instant claims 1-2 obvious over the teachings 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 particularly given that the claimed (relative) properties are the result of a given polymer structure, which is rendered obvious over the teachings of Yamate 2018, and are not clearly defined and thus lack clarity as discussed in detail above.
With respect to instant claims 3-9, Yamate 2018 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) (not as a copolymer component of the polymer) with examples thereof including polyfunctional acrylates and acrylic polymerizable oligomers such as epoxy (meth)acrylate (Paragraphs 0056-0064) that may read upon the broadly claimed thermosetting resin of instant claims 3-6 as well as the broadly claimed “active ester-based compound” of instant claim 7, and hence, the claimed invention as recited in instant claims 3-7 would have been obvious over the teachings of Yamate 2018. With respect to instant claims 8-9, given that Yamate 2018 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 0061-0062) such that absent any clear showing of criticality and/or unexpected results with respect to the claimed bonding structure ratio of the claimed polybutadiene, and given 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 the claimed invention as recited in instant claims 8-9 would have been obvious over the teachings of Yamate 2018, particularly 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 2018 teaches that a formed body (e.g., “molded body”) 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 0102), and hence instant claim 10 would have been obvious over the teachings of Yamate 2018.
With respect to instant claim 11, given that the adhesive/resin composition and layer formed therefrom as taught by Yamate 2018 is a capable of use as 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 “insulating layer comprising the resin composition” from a layer comprising the adhesive resin composition taught by Yamate 2018, instant claim 11 would have been obvious over the teachings of Yamate 2018.
With respect to instant claim 12, Yamate 2018 teaches that the composition may further comprise an organic solvent (Paragraphs 0053-0055 and 0101) and given that Yamate 2018 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 0105 and 0107-0110), Yamate 2018 clearly teaches a “resin varnish” as instantly claimed. Hence, instant claim 12 would have been obvious over the teachings of Yamate 2018.
With respect to instant claims 13-18, it is again noted that Yamate 2018 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 2018 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 0018 and 0111-0118) or as an adhesive layer for bonding a plastic substrate to another molded sheet such as a metal foil like a copper foil (Paragraphs 0119-0120) 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 2018 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 13, 15, and 17, although Yamate 2018 does not teach that the adhesive resin composition is impregnated into a base material to form a prepreg as in instant claim 13, Yamate 2018 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 0095-0096), and given that Yamate 2018 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 2018 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 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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18, respectively, of copending Application No. 18/576470 (reference application) for generally the reasons recited in the prior office action and restated below with respect to the amended claims in both applications.
As noted in the prior office action, although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of 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 instant claims comprises “at least one repeating unit derived from a polymerizable compound of formula (I’)” wherein X1 and X2 are C3 to C6 branched alkyl groups, while the polymer of the copending claims is derived from polymerizable compounds (I) and (II), wherein copending compound (I’) similar to the instantly claimed compound (I’) but with X1 and X2 being selected from specific C7 to C9 branched alkyl groups. However, given the similar chemical structures of formula (I’) of each application, and that a C6 branched alkyl group would have been obvious over the copending C7 branched alkyl groups given that a C6 alkyl group is an obvious homolog to a C7 alkyl group (see MPEP § 2144.09), the Examiner maintains her position that instant claims 1-18 would have been obvious over copending claims 1-18, respectively, 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 (as amended) 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 (WO2020/071456A1, again please refer to US2021/0347726A1 as an English translation thereof for the below cited sections) for generally the reasons recited in the prior office action and restated below with respect to the amended claims in both applications.
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 compound (I’) 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 teaches a similar 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 not as part of the polymer, the Examiner again 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”. 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 rejection over Yamate 2019 or Yamate 2018 as restated 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’) is 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 as an insulator for printed wiring boards” (see page 7, “The Examples” 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,” but that “[h]owever, applicants have found out that, by using the above polymer of the claims, all of the above physical properties are achieved as recited in the claims” (see page 7, “The Examples” 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 homopolymer consisting of repeating units derived from a polymerizable compound of formula (I’) given that instant claim 1 recites, “A polymer comprising at least one repeating unit derived from a polymerizable compound of formula (I’)” (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), or a polymer consisting of at least one of the repeating units and at least one repeating unit derived from another radically polymerizable compound” (emphasis added, see Paragraph 0022 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, given that the examples only include a homopolymer of N,N-bis(4-(n-butyl) phenyl)acrylamide, while the claims nor the specification require any minimum content of said at least one repeating unit derived from the claimed polymerizable compound of formula (I’), e.g., one skilled in the art would not reasonably expect a polymer comprising only 1% of repeating units derived from a polymerizable compound of the claimed formula (I’) and 99% of repeating units derived from another radically polymerizable compound(s), such as one known to produce a polymer with a “high” dielectric constant and/or a “high” dielectric loss tangent and/or “low” glass transition point and/or that exhibits “low” solubility in organic solvents, to exhibit properties as instantly claimed, especially given the lack of clarity of the claimed “low dielectric constant”, “low dielectric loss tangent”, “high glass transition point”, “high solubility in organic solvents” and “high compatibility with thermosetting resins” as discussed above.
With respect to the obviousness rejection over Yamate 2019, 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 “Y-N(Ar)(R) includes a diphenyl (meth)acrylamide” but that “[h]owever, one of ordinary skill in the art [allegedly] would not find a reason or motivation to select a branched C3 to C6 alkyl group as the substituents on the phenyl group,” arguing that in Yamate 2019, “there is [allegedly] no such motivation and/or suggestion” (see page 8 “Yamate2019 (WO2019/198792)” section). However, the Examiner respectfully disagrees given that Yamate 2019 clearly recites that specific examples of the “substituent” of the “unsubstituted or substituted” aryl/phenyl include a C1 to C20 alkyl group (encompassing the instantly claimed C3 to C6 branched alkyl group), and more particularly, those as recited in Paragraph 0010 including a t-butyl group, i.e., a C3 to C6 branched alkyl group as instantly claimed, and given again that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, Applicant’s arguments with respect to Yamate 2019 allegedly providing no motivation and/or suggestion for selecting a branched C3 to C6 alkyl group as the substituents on the phenyl group are not persuasive.
The Applicant also argues that Yamate 2019 teaches that the adhesive composition is described in paragraph 0007 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” such that “[a]s the result, the polymer having such properties is preferable to 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 in the claims and 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 or suggested in Yamate 2019, including how to achieve such properties” (see page 8 through the first paragraph of page 9 of the response). The Applicant then concludes that “[t]hough, Yamate 2019 may have a very broad generic encompassing disclosure, there is [allegedly] no motivation and suggestion to select particularly the compounds of formula (I’)” and that “[a]s well known, the test for obviousness is not merely generic broad encompassing, but rather what would be obvious in view of reasons, motivations, etc., to achieve in view of the disclosure of the cited art,” arguing further that “since the purpose of Yamate 2019 is [allegedly] different from the purpose of the present application, the properties in claim 1 and the usage flowing therefrom of an insulator for printed wiring boards [allegedly] would not be expected in view of Yamate 2019” (“Conclusion” section on page 9). 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 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 and indefinite 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, particularly since insulators for printed wiring boards are known to require some degree of “adhesive” properties, e.g., for impregnation of fiber reinforcements that may be formed from polymeric fibers, or for lamination between prepregs that comprising polymeric resins, etc. Further, 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). Hence, the Examiner maintains her position with respect to Yamate 2019.
With respect to the obviousness rejection over Yamate 2018, the Applicant essentially provides the same arguments as above with respect to the obviousness rejection over Yamate 2019, similarly arguing that Yamate 2018 describes a polymer of Y-N(Ar)(R) and that “selecting the diphenyl compound having a branched C3 to C6 alkyl group as the substituents on the phenyl group is [allegedly] without motivation or suggestion, and as such, there is [allegedly] no obviousness,” arguing that in Yamate 2018, “there is no such motivation and suggestion” (see page 9, section “Yamate2018 (WO2018/70079)”). However, the Examiner respectfully disagrees and again notes that Yamate 2018 clearly teaches preferred polymerizable compounds represented by formula (I) being N,N-diphenyl(meth)acrylamide that may be substituted or unsubstituted with exemplified substituents on the phenyl group(s) including C1 to C6 alkyl group such as an i-propyl group or a t-butyl group, i.e., a C3 to C6 branched alkyl group as instantly claimed, and given again that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, Applicant’s arguments with respect to Yamate 2018 allegedly providing no motivation and/or suggestion for selecting a branched C3 to C6 alkyl group as the substituents on the phenyl group are not persuasive.
The Applicant also argues that Yamate 2018, like 2019, teaches an adhesive composition having excellent adhesion to a plastic base material, and that “[i]n examples of Yamate 2018, there is no data of a solubility in organic solvents and a compatibility with epoxy resin” while “[t]o the contrary, the 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” such that “[a]s the result, the polymer having such properties is preferable as an insulator for printed wiring boards” (see first three paragraphs of page 10). The Applicant then concludes that “[i]n Yamate 2018, selecting the diphenyl compound having a branched C3 to C6 alkyl group as the substituents on the phenyl group is [allegedly] without reason, rationale, motivation or suggestion” and that “[i]n both Yamate 2020 and Yamate2018, there is no such motivation and suggestion” (emphasis added), arguing additionally, that “in Yamate 2018, the properties in claim 1 make the polymer a preferable choice as an insulator for printed wiring boards, which [allegedly] would not have been expected in view of Yamate 2018” and thus “there [allegedly] is not obviousness” (see “Conclusion” section on page 10). However, the Examiner first notes that Yamate 2020 was not relied upon for any of the obviousness rejections for the instant claims and thus the Examiner can only assume that Applicant meant to again refer to Yamate 2019 which was utilized in a separate rejection from Yamate 2018 and fully addressed above. The Examiner also notes again that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, 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 and indefinite 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 2018, 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 2018, 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, particularly since insulators for printed wiring boards are known to require some degree of “adhesive” properties, e.g., for impregnation of fiber reinforcements that may be formed from polymeric fibers, or for lamination between prepregs that comprising polymeric resins, etc. Further, 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). Hence, the Examiner maintains her position with respect to Yamate 2018.
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