DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed 2/13/2026 has been entered. Claims 1-20 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-3 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shiohara (Asymmetric Anionic Polymerization of Alkyl-Substituted N,N-Diphenylacrylamide Derivatives) for generally the reasons recited in the prior office action and restated below with respect to the amended claims, wherein the Examiner maintains her position that branched alkyl substituents such as tert-butyl substituent(s) would have been obvious over the (non-limiting) linear alkyl substituents such as 4-butyl (n-butyl) substituent(s) as taught by Shiohara.
As discussed in the prior office action, Shiohara teaches alkyl-substituted N-N-diphenylacrylamide derivatives having a similar structure to the instantly claimed compounds of formulae (I’), (III’), and (IV), and polymers formed therefrom, as in instant claims 1-2, with examples utilizing the monomers shown below comprising C1, C4, or C6 alkyl groups, with a specific example utilizing butyl C4 alkyl groups as both R1 and R2, similar to the instantly claimed X1 and X2, respectively, such that the only difference between the di-alkyl-substituted C4 example taught by Shiohara and the instantly claimed polymer of instant claims 1-2 and the instantly claimed compound of instant claims 19-20, is that Shiohara utilizes a linear butyl C4 alkyl group in the example versus a branched C4 alkyl group (Entire document, particularly Abstract, Experimental section). However, given that a branched C4 alkyl group(s) would have been obvious over the linear C4 alkyl group(s) of the C4 example taught by Shiohara, particularly in light of MPEP § 2144.09 and that Shiohara does not specifically limit the alkyl-substituted derivatives to linear alkyl groups only, the Examiner maintains her position that the claimed invention as recited in instant claims 1-2 and 19-20 would have been obvious over the teachings of Shiohara (Entire document).
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Further, with respect to instant claim 3, given that the claimed “resin composition” as recited in instant claim 3 only comprises the polymer according to instant claim 1, the Examiner takes the position that the claimed “resin composition” of instant claim 3 is also obvious over the teachings of Shiohara for the same reasons as discussed above with respect to instant claim 1.
Claims 1-20 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 claims 2 and 20); 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 (encompassing the instantly claimed C3 to C6 branched alkoxy group), a C3 to C6 cycloalkyl group (reading upon the claimed C3 to C6 cyclic alkyl 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), 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. similar to the branched structure of instantly claimed formulae (III’) and (IV) but with a phenyl group in place of one methyl group at each terminus; Entire document, particularly Paragraphs 0006-0014). Hence, Yamate 2019 teaches a compound and a polymer comprising repeating units derived from the compound that may read upon both the instantly claimed compounds of formulae (III’) and (IV) of instant claims 19-20 and the 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 and the claimed compound of instant claims 19-20 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.
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 1-20 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 claims 2 and 20), 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 (encompassing the instantly claimed C3 to C6 branched alkoxy group), a C3 to C6 cycloalkyl group (reading upon the claimed C3 to C6 cyclic alkyl 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 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-methoxyphenylacrylamide) (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. similar to the branched structure of instantly claimed formulae (III’) and (IV) but with an additional phenyl group in place of one methyl group at each terminus and thus also a “bulky” substituent). Hence, Yamate 2018 teaches a compound and a polymer comprising repeating units derived from the compound that may read upon both the instantly claimed compounds of formulae (III’) and (IV) of instant claims 19-20 and the 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 and the claimed compound of instant claims 19-20 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.
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 1-19 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 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 or cyclic, alkyl or alkoxyl groups, while the polymer of the copending claims is derived from polymerizable compounds (I) and (II) (each of which can actually read upon the other) wherein copending compound (I’) similar to the instantly claimed compound (I’) but with X1 and X2 being selected from C7 to C20 alkyl or alkoxyl groups. However, given the similar chemical structures of formula (I’) of each application, and that a C6 alkyl group, or more specifically a C6 branched or cyclic alkyl group would have been obvious over the copending C7 alkyl 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. Similarly, with respect to the claimed compound of formula (III’) of instant claim 19 which is the same as the instantly claimed polymerizable compound of formula (I’) utilized to produce the polymer of instant claim 1, the Examiner takes the position that the polymerizable compound of copending claim 1 would similarly render the instantly claimed compound of formula (III’) obvious for the same reasons as discussed above with respect to instant claim 1 over copending claim 1, and hence, instant claim 19 would also have been obvious over copending claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8, and 10-20 (as amended) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/840604, taken alone or in view of Yamate 2020 (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 (I) which may read upon the instantly claimed polymerizable compound (I’) as repeating units of the instantly claimed polymer of instant claim 1, with the polymerizable compound of copending claim 3 more particularly reading upon the instantly claimed compound (I’) as repeating units of the polymer of instant claim 2, and given that the use of a curable polymer or prepolymer of a polymerizable compound for a thermosetting resin composition would have been obvious over the polymerizable compound itself in the thermosetting resin composition, and vice versa, particularly in view of Yamate 2020 which teaches a similar resin composition comprising a similar polymer derived from similar polymerizable compounds wherein the composition may further comprise other polymerizable compounds not as part of the polymer, the Examiner takes the position that the claimed polymer and resin composition thereof as recited in instant claims 1-5 and 8 would have been obvious over copending claim 1 or copending claim 3 taken alone or in view of Yamate 2020 given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. Similarly, the resin composition for an insulating layer of a printed wiring board of instant claim 11 would have been obvious over the resin composition for the insulating layer of a printed wiring board of copending claim 5 or 13, the resin varnish of instant claim 12 obvious over the resin varnish of copending claim 6 or 14, the prepreg of instant claim 13 obvious over the prepreg of copending claim 7 or 15, and the adhesive film of instant claim 14 over the adhesive film of copending claim 8 or 16, for the same reasons as discussed above with respect to the resin composition of instant claim 3 over the resin composition of copending claim 1, or copending claim 2 which includes a polymerization initiator for polymerizing the polymerizable compound, each taken alone or in view of Yamate 2020. Further, with respect to instant claim 10 directed to a molded body comprising a cured product of the resin composition of instant claim 3, given that the cured product of copending claim 4 or copending claim 12 would comprise a polymer of the polymerizable compound of the resin composition of copending claim 1 or copending claim 2, respectively, instant claim 10 would have been obvious over the cured product of copending claim 4 or 12. With respect to instant claims 15 and 16, given that a cured product of the prepreg of copending claim 7 or 15 comprising the thermosetting resin, and a cured product of the adhesive film of copending claim 8 or 16 comprising the thermosetting resin would have been obvious to one having ordinary skill in the art, wherein the cured product would comprise a polymer of the polymerizable compound, instant claims 15 and 16 would have been obvious over copending claim 7 or 15, and copending claim 8 or 16, respectively, given that said cured product would be capable of use as an “insulator for printed wiring boards”. 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. Lastly, with respect to the claimed compound of instant claims 19-20, given that the at least one compound of formula (I) of copending claim 1 and more particularly the compound of formula (II) of copending claim 3 encompasses the instantly claimed compound of formula (III’) of instant claim 19 as well as the instantly claimed compound of formula (IV) of instant claim 20, instant claims 19-20 would have been obvious over copending claim 1 or 3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive with respect to the obviousness rejection over Shiohara or Yamate 2019 or Yamate 2018 as restated above with respect to the amended claims. Specifically, with respect to Shiohara, the Applicant argues that the instant claims “recite a diphenyl acrylamide having 0 or 1 bulky substituents such as a C3 to C6 branched alkyl group, a C3 to C6 cyclic alkyl group, etc.”, while “Shiohara on the other hand teaches a diphenyl acrylamide having a linear C1-C6 alkyl group, [allegedly] provides no description of any other than the aforementioned substituent, and [allegedly] offers no description about bulky substituents such as a C3 to C6 branched alkyl groups,” arguing that “Shiohara describes study results about synthesizing a polymer” and “does not teach any usage of the polymer, thus, providing no reason or rationale for modification in any way,” referring to In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) with respect to “well-established long standing precedent” as to why the “rejection should be readily withdrawn” (see page 10 of the response). The Applicant then argues that “the (meth)acrylamide-based polymer of the claims has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and exhibits high solubility in organic solvents” and “[t]herefore, the polymer can be used as an insulator for printed wiring boards” referring to “several dependent claims in this regard” and further argues that as shown by the test examples presented in the present specification, although “dielectric constant, dielectric loss tangent, and solubility in organic solvents of t-butyl group are the same as n-butyl group”, “a glass transition point of t-butyl group is higher than n-butyl group: (see paragraph bridging pages 10-11 of the response). The Applicant argues that a “higher glass transition point means a higher heat resistance” and that “the polymer of t-butyl substituted diphenyl acrylamide [allegedly] offers excellent significant unexpected advantages compared to the polymer containing a n-butyl substituted diphenyl acrylamide” such that allegedly “one of ordinary skill in the art would have no way to predict or expect such a difference in the glass transition point in view of Shiohara or otherwise,” arguing that “[i]n conclusion, Shiohara does not teach a diphenyl acrylamide having a bulky substituents [sic] such as a C3 to C6 branched alkyl group, a C3 to C6 cyclic alkyl group, etc.” and “does not teach any use for the polymer, especially, not as an insulator of printed wiring board” such that there is allegedly “no obviousness” (page 11 of the response). However, the Examiner respectfully disagrees and first notes that the instant claims do not require any particular properties with respect to the claimed polymer, e.g., “a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and…high solubility in organic solvents” as argued by the Applicant, and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner also notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). More particularly, with respect to Applicant’s alleged “unexpected” results when utilizing a t-butyl group(s) versus an n-butyl group(s), the Examiner notes that it is well established in the art that glass transition temperature (Tg) generally increases with the bulkiness of substituent groups and that a t-butyl substituent as a branched C4 alkyl group is known to provide a higher Tg than an n-butyl substituent as a linear C4 alkyl group given that t-butyl is a bulky group that restricts the rotation of the polymer backbone and promotes interlocking between different polymer chains while n-butyl on the other hand is a highly flexible straight group that allows for free rotation and acts as an internal plasticizer as evidenced by, for example, Fleischhaker (Glass-Transition-, Melting-, and Decomposition Temperatures of Tailored Polyacrylates and Polymethacrylates: General Trends and Structure–Property Relationships, Entire document) and/or Gargallo (Effect of the Side Chain Structure on the Glass Transition Temperature. 2. Poly (o-alkylphenyl methacrylate)s, Entire document) and/or Gao (An Empirical Correlation Between Glass Transition Temperatures and Structural Parameters for Polymers with Linear and Branched Alkyl Substituents, Entire document) and/or the attached Google Search AI Overview results for “substituent effects of tert-butyl and n-butyl in polymers” (particularly pages 1-2). It is also noted that contrary to Applicant’s arguments, there are various models in the art that can be utilized by one of ordinary skill in the art to “predict or expect such as difference in the glass transition point” between the t-butyl substituted polymer versus the n-butyl substituted polymer as evidenced by, for example, Gao or Cypcar (Prediction of the Glass Transition Temperature of Multicyclic and Bulky Substituted Acrylate and Methacrylate Polymers Using the Energy, Volume, Mass (EVM) QSPR Model, Entire document) or Askadskii (Determination of Glass-Transition Temperatures of Polymers: A Modified Computational Scheme, Entire document); and further, given that Applicant’s examples do not provide any clear showing of “unexpected” results, are not commensurate in scope with the instant claims, and cannot be directly compared against one another given that the comparative polymer was not polymerized under the same conditions as the inventive polymer, which as evidenced by Gargallo is important in conducting a comparative study (see Gargallo, Introduction and Experimental), Applicant’s arguments and reference to In re Papesch with respect to the alleged non-obviousness of the claimed C3 to C6 branched/cyclic alkyl/alkoxy group(s) over teachings of Shiohara to alkyl substituents, or more specifically, linear alkyl substituents, are not persuasive.
With respect to the claimed compound as recited in instant claims 19-20, the Applicant further argues that the “compound of claim 19 is a monomer for the polymer of claim 1” and that “[s]ince the polymer of claim1 [sic] is [allegedly] non-obvious, a monomer thereof is [allegedly] non-obvious too for at least the same reasons as set forth above” (see page 11, lines 14-16). However, the Examiner respectfully disagrees for the same reasons as discussed in detail above with respect to the polymer of claim 1, although it is noted that claim 19 is an independent claim that does not rely upon claim 1 and the Applicant provides no evidence of unexpected results with respect to the claimed compound over the compounds taught by Shiohara.
With respect to the obviousness rejection over Yamate 2019, the Applicant argues that the groups of Yamate with respect to the copolymer of Y-N(Ar)(R) are “unsubstituted or substituted” and that “[i]n the examples, the compound having no substituent on a benzene ring is used,” arguing that “in the instant claims, a diphenyl acrylamide having 0 to 1 bulky substituents, such as a C3 to C6 branched alkyl group, a C3 to C6 cyclic alkyl group, etc. are present,” while in Yamate 2019, “[i]f a benzene ring has any substituents, the substituents may include bulky substituents” but that “[h]owever, a diphenyl acrylamide may or may not have these substituents” and “[b]ulky substituents such as a C3 to C6 branched alkyl group, a C3 to C6 cyclic alkyl group, etc. are not intended especially” (see pages 11-12 of the response). The Applicant also argues that Yamate 2019 is directed to an adhesive composition and that “it is not described in Yamate 2019 that the adhesive composition is suitable for an insulator for printed wiring boards (in this regard, see several dependent claims)” and that “[i]t is not described in Yamate 2019 that the polymer has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and exhibits high solubility in organic solvents, all of which represent [alleged] significant unexpected advantages that [allegedly] could not have been predicted based on the teachings of Yamate 2019,” wherein although the Applicant admits that the Y-N(Ar)(R) of Yamate 2019 may be a diphenyl acrylamide, the Applicant argues that “[s]ubstituents on a benzene ring are [allegedly] not intended, and so, particular substituents are [allegedly] not suggested” (see page 12 of the response). However, the Examiner respectfully disagrees and again notes that the instant claims do not require any particular properties with respect to the claimed polymer, e.g., “a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and…high solubility in organic solvents” as argued by the Applicant, and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner also notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985); and given that Applicant’s arguments with respect to an “insulator for printed wiring boards” rely on language recited in the preamble and/or are based upon recitations of intended end use that as recited do not result in any structural difference between the claimed invention and the prior art, wherein the resin composition taught by Yamate 2019 is capable of the same intended end use, Applicant’s arguments that “it is not described in Yamate 2019 that the adhesive composition is suitable for an insulator for printed wiring boards (in this regard, see several dependent claims)” are not persuasive. It is further noted that Yamate 2019 is not limited to the working examples and must be considered as a whole in assessing the patentability of claims, particularly given that Yamate 2019 clearly recites that the technical scope of the invention is not limited by the disclosed examples (Paragraph 0087), and given that Yamate 2019 clearly teaches that in the formula (I) Y-N(Ar)(R), Ar may be unsubstituted or substituted C6 to C10 aryl group with the substituent thereof being a C3 to C6 cycloalkyl group or preferably being a C1 to C12 alkyl group or a C1 to C12 alkoxy group, and more preferably a C1 to C6 alkyl group or a C1 to C6 alkoxy group; while R is preferably an unsubstituted or substituted C6-C14 aryl group, more preferably an unsubstituted or substituted C6 to C10 aryl group, with the substituent thereof being the same as those exemplified above for Ar (Paragraphs 0009-0011), with all six of the preferred polymerizable compounds represented by formula (I) taught by Yamate 2019 in Paragraph 0014 being N,N-diphenyl(meth)acrylamide compounds with four of said six preferred compounds having substituent groups on the phenyl rings and two compounds thereof having “bulky substituents”, Applicant’s arguments with respect to the substituents not being “intended” are not persuasive, especially given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, given that Yamate 2019 explicitly states that with respect to the substituents, specific examples of the C1 to C20 alkyl group include an i-propyl (isopropyl) group (i.e., a branched C3 alkyl group), an i-butyl (isobutyl) group (i.e., a branched C4 alkyl group), and a t-butyl (i.e., a highly branched C4 alkyl group); while specific examples of the C1 to C20 alkoxy group similarly include i-propoxy group, i-butoxy group, and t-butoxy group, i.e., branched C3-C6 alkoxy groups, Applicant’s arguments over the teachings of Yamate 2019 are not persuasive. Hence, absent any clear showing of criticality and/or unexpected results with respect to the claimed polymer comprising at least one unit derived from a polymerizable compound of formula (I’) as recited in instant claim 1, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Yamate 2019.
Similarly, Applicant’s arguments that the compound of claim 19 is a monomer for the polymer of claim 1 (although claim 19 does not depend upon claim 1) and that since the polymer of claim 1 is allegedly not obvious in view of the cited art, nor is the monomer “at least for the same reasons” on page 13 (see lines 3-5) are not persuasive given the Examiner’s response above to said “same reasons” which are incorporated herein by reference.
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 teaches groups that are “unsubstituted or substituted”; that in the examples of Yamate 2018, the compound having no substituent on a benzene ring or the compound having at most C1 alkyl, alkoxy group is used only; that the diphenyl acrylamide of Yamate 2018 may or may not have bulky substituents; that if a benzene ring has any substituents, the substituents may include bulky substituents but that since a diphenyl acrylamide may or may not have these substituents, bulky substituents “are not intended especially”; that it is “not described in Yamate 2018 that the polymer has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and high solubility in organic solvents”; and further that the “compound of claim 19 is a monomer for the polymer of claim 1” and that since the polymer of claim 1 is allegedly not obvious in view of the cited prior art, “nor is the monomer thereof for at least the same reasons” (see pages 13-14). However, the Examiner again respectfully disagrees and does not find Applicant’s arguments persuasive for essentially the same reasons as discussed in detail above (and incorporated herein by reference), wherein it is again noted that the instant claims do not require any particular properties with respect to the claimed polymer, e.g., “a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and…high solubility in organic solvents” as argued by the Applicant; 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; the prior reference is not limited to the working examples and must be considered as a whole in assessing the patentability of claims wherein contrary to Applicant’s arguments, Yamate 2018 clearly teaches the use of a “bulky” substituent on the phenyl groups of the diphenyl(meth)acrylamide compound in at least Example 12; and given that Yamate 2018, like Yamate 2019, 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 (e.g., “bulky” C3-C6 branched alkyl groups); C1 to C6 alkoxy group, such as an i-propoxy group or a t-butoxy group (e.g., “bulky” C3 to C6 branched alkoxy groups); and a C3 to C6 cycloalkyl group (“bulky” C3 to C6 cyclic alkyl groups) as discussed in detail above, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Yamate 2018, especially given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed invention as recited in instant claims 1-20 over Yamate 2018.
With respect to the obviousness-type double patenting rejections, as noted above, the provisional rejections have been maintained 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 2/13/2026.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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