DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto US 20190106607 A1 as evidenced by Hayashi US 20130217805 and Miyoshi WO 2022190563A1.
Regarding claim 1, Yamamoto teaches a composition comprising thermosetting resin, and an epoxy resin (Abstract).
Yamamoto teaches the thermosetting resin is a polyurethane resin (Paragraph [0020]). This reads on the claimed “polyurethane resin.” Yamamoto also teaches the composition comprises a curing agent which is an isocyanate compound (Paragraph [0073]). This reads on the claimed “isocyanate crosslinking agent.”
Yamamoto also teaches the epoxy resin can be Jer 1007 (Paragraph [0056]).
It would have been obvious to select Jer 1007 as the epoxy resin of Yamamoto because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Jer 1007 has an epoxy equivalent weight of 1925. This falls within the claimed range of 450-3000. (Hayashi [0162]).
Regarding claim 2, Jer 1007 has a hydroxy value of 188 mg KOH/g. This falls within the claimed range of 450-3000. (Miyoshi, Page 10).
Regarding claim 3, Yamamoto is silent on the temperature where 50% mass change is observed in the composition. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The composition of Yamamoto as described above will therefore necessarily possess the claimed temperature at which a mass change of 50 mass% is observed in
thermogravimetric differential thermal analysis (TG-DTA).
Regarding claim 9, Yamamoto also teaches the epoxy component is 50-500 parts by mass of the thermosetting resin component (Paragraph [0062]). This overlaps with the claimed range of 10-100 parts by mass.
Regarding claim 11, Yamamoto also teaches the isocyanate curing agent is 0.2-200 parts by mass based on 100 parts by mass of the thermosetting resin component (Paragraph [0078]). Yamamoto also teaches the epoxy component is 50-500 parts by mass of the thermosetting resin component (Paragraph [0062]).
Therefore, Yamamoto teaches that the isocyanate curing agent is 0.03-300 parts by mass based on 100 parts of the epoxy and thermosetting component. This overlaps with the claimed range of 2-50 parts by mass.
Regarding claims 12-14, the phrase “is used for” indicates intended use. The claimed intended use limitations do not require steps to be performed or limit the claims to a particular structure. Therefore, these limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to anticipate the claims. See MPEP 2111.02.
Claims 4-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto US 20190106607 A1 in view of Hukushima US 20120217045 in further view of Shrivastava, A., (Chapter 2 - Polymerization, In Plastics Design Library, Introduction to Plastics Engineering, William Andrew Publishing, 2018, Pages 17-48) as evidenced by Hayashi US 20130217805 and Miyoshi WO 2022190563A1.
Regarding claim 4 and alternatively regarding claim 3, Yamamoto reads on the limitations of 1-2, 9 and 11-14.
However, Yamamoto is silent on the type of urethane thermosetting resin used in the composition. Yamamoto teaches the composition is used to form an adhesive composition used in applications such as printed wiring boards (Abstract, Paragraph [0001]). Yamamoto also teaches the composition comprises fillers (Paragraph [0063]).
Hukushima teaches a composition comprising a polyurethane resin, and a curing agent (Abstract). Hukushima teaches the curing agent can be an isocyanate (Paragraph [0087]). Hukushima also teaches the composition comprises a reactive epoxy resin (Paragraph [0087]) which can be used in combination with the isocyanate curing agent (Paragraph [0087]).
Hukushima teaches the resin composition can be used for wiring boards and has excellent electrical properties (Paragraph [0116]). Hukushima also teaches the resin composition has adhesive properties (Paragraph [0066]). Hukushima teaches a substantially similar composition used for the same application as Yamamoto.
Hukushima also teaches the acid value of the polyurethane resin is 10-35 mg KOH/g (Abstract). This reads overlaps with the claimed range of 5-30 mg KOH/g.
It would have been obvious to one of ordinary skill in the art to use the polyurethane resin taught in Hukushima as the thermosetting polyurethane resin of Yamamoto because Hukushima teaches a suitable polyurethane resin cured with an isocyanate curing agent and reacted with an epoxy resin with adhesive properties used in wiring board applications. The polyurethane of Hukushima represents a suitable polyurethane identified by Hukushima as being suitable for use in applications similar to Yamamoto. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
This reads on the limitations of claim 4.
Further, Hukushima also teaches the composition comprises a unit derived from a polycarbonate diol (Paragraph [0015]). This reads on the claimed “carbonate diol.” This reads on the limitations of claim 5.
Additionally, Hukushima teaches the structural unit derived from a polyol can be 1,2-cyclohexanedimethanol (Paragraph [0024]). It would have been obvious to select 1,2-cyclohexanedimethanol as the diol of the polyurethane of Hukushima because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Yamamoto in view of Hukushima does not expressly disclose the limitations of claim 3. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The composition of Yamamoto in view of Hukushima as described above will therefore necessarily possess the claimed temperature at which a mass change of 50 mass% is observed in
thermogravimetric differential thermal analysis (TG-DTA).
Regarding claims 6, the phrase “is used as” indicates intended use. The claimed intended use limitations do not require steps to be performed or limit the claims to a particular structure. Therefore, these limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to anticipate the claims. See MPEP 2111.02.
This reads on the limitations of claim 6.
Hukushima also teaches the polyurethane resin can be terminated with a hydroxyl group (Paragraph [0051]). It would have been obvious for the polyurethane to be terminated with a hydroxyl group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed “hydroxyl group containing resin” where the hydroxyl group is “at a terminal.” Hukushima also teaches the acid value of the polyurethane resin is 10-35 mg KOH/g (Abstract). This reads overlaps with the claimed range of 0.1-20 mg KOH/g.
This reads on the limitations of claim 7.
Hukushima teaches the isocyanate component is diphenylmethane-2,4'-diisocyanate (Paragraph [0041]). It would have been obvious to select diphenylmethane-2,4'-diisocyanate (Paragraph [0041]). as the diisocyanate of the polyurethane of Hukushima because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed “aromatic diisocyanate.” This reads on the limitations of claim 8.
Hukushima also teaches the polyurethane resin has a number average molecular weight of 1500 to 20000 g/mol. However, Hukushima is silent on the weight average molecular weight. Polyurethanes are synthesized via step-growth polymerizations. Polymer synthesized via step-growth polymerization typically have a PDI of about 2.0 (Shrivastava, Section 2.4.5.)
Therefore, it would have been obvious for the polyurethane of Hukushima to have a PDI of 2.0 because it is well known in the art for polyurethanes to typically have a PDI of approximately 2.0.(Shrivastava, Section 2.4.5.). This corresponds to a Mw of about 3000-40,000. This falls overlaps with the claimed range of 1000 to 100,000. This reads on the limitations of claim 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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