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 .
DETAILED ACTION
Specification
The disclosure is objected to because of the description of “organic elastomer” cause confusion. Appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: “select from … and…” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite because the definition of “an organic elastomer” causes confusion. The embodiments exemplified in the present application, wherein the resin composition comprises the “organic elastomer” being spherical silica particles, which are inorganic particles should read upon inorganic filler, as well-known in the art, does not match the resin composition as presently claimed. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) (see MPEP 2173.03). Claims 1-10 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
Claims 1 and 8-10 are rejected as being vague and indefinite because the base of the weigh proportion wt% is not clear, it could be based on total resin composition or solid content of the resin composition including resins, siloxane compound and fillers. In this office action, it is taken that the wt% is based on solid content of the resin composition including resins, siloxane compound and fillers. Claims 2-7 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 requires the weight proportion of the filler equal or higher than 75 wt% included weight proportion higher than 80 wt%, which is out of the range of 60 to 80 wt% as recited in its base claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh et al US 2022/0380545, ‘545 hereafter).
Regarding claims 1-2 and 4-8, ‘545 discloses a resin composition comprising a bismaleimide resin or/and hardener ([0008], [0009], [0076], Prepolymer 1-8, diamine compound reads upon hardener, Examples E1-E5, C9 and C10); spherical silica particles having amine group reading upon bother filler and organic elastomer ([0017],[0076], SC-2500SXJ is spherical silica treated by phenylamine-silane from Admatechs with particle size of 0.5 micron, Examples E1-E5, C9-C10); and a siloxane compound having amine group reading upon presently claimed structure formula (2) as in claim 7 (Formula (I), [0011], [0076], NH-30D, NH-15D, prepolymer 1-8, Example E1-E5, C9-C10), wherein weight proportion of silica particle can be 66.7 wt% ([0059], Examples E1-E5, C9-C10) and weight proportion of siloxane compound can be 5 wt% (Example C9-C10, 15/300=5%). In addition, ‘545 discloses that the composition may further include an organic elastomer with weight proportion of 1.5 wt% (Example E10-E12, Ricon 100, B-1000 are elastomers).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3, 5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh et al US 2022/0380545, ‘545 hereafter) in view of Watanabe et al (US 2020/0190332, ‘332 hereafter).
Regarding claims 3, 5 and 9, ‘545 teaches all the limitations of claim 1, but ‘545 does not set forth the silica particles having epoxy group or acrylic group. However, in the same filed of endeavor, ‘332 teaches surface-treated silica particles including the silica particles having epoxy group or acrylic group which can be used in a resin composition to render the composition having excellent electric properties, wherein the mass ratio of silica particle to resin can be up to 90:10 ([0007], [0010], [0026]-[0032], [0035]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the silica particle having epoxy or acrylic group as taught by ‘332, to modify the resin composition of 545, in order to render a resin composition having excellent electric properties, if these properties are so desirable. Regarding claim 10, ‘545 also discloses that the epoxy can be used as a crosslinking agent in an amount of 20 to 30 parts per 100 parts prepolymer, thus render the weight proportion of epoxy, bismaleimide and hardener satisfying present claim 10 ([0052]-[0053], in the Examples only 33% resin composition including bismaleimide-based prepolymer, crosslinking agent and hardener such as diamine compound).
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kozakai et al (US 2007/0090299). Kozakai discloses a resin composition comprising an epoxy resin, a silicone resin, a spherical silica having particle size 0.1 to 1 0 microns, and a silicone rubber particle ([0019]-[0025]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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