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 .
This communication responds to the application and claim set filed May 16, 2024. Claims 1-10 are currently pending.
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 4-7 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.
Claim 1 recites “ A resin composition, comprising… an acrylic resin”. Claims 4-7 recite “ The resin composition of claim 1, ..a weight proportion of the acrylate resin. It is unclear if the “an acrylic resin” encompasses “the acrylate resin”. Does the applicant intended for acrylate resin to be included in the definition of acrylic resin?. Examiner is interpreting “acrylic resin” includes “acrylate resin”.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1- 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al., hereinafter Nishimura (JP 2023-161487 (A) as listed on the IDS dated 07/07/2025).
Regarding claim 1, Nishimura teaches a resin composition comprising (A) an epoxy resin, (B) active ester-based curing agent, (C) a thermoplastic resin having a hyperbranch structure, (D) inorganic filler (claims 1, 10, and 12), (E) radical polymerizable compounds including (meth)acrylic-modified polyphenylene ether resins (Trademark SA9000) ([0012], [0092]); and curing accelerators [0099], wherein the curing accelerator includes imidazole-based curing accelerators such as 1-benzyl-2- phenylimidazole [0104], amine-based curing accelerator such as 4-dimethylaminopyridine [0106], and combinations thereof [0099-0100]. Then, a selection of combination of pyridine compounds and imidazole compounds is recognized by Nishimura. It is noted that although pyridine compounds and imidazole compounds are listed as possible selection out of many accelerator compounds, the MPEP 2131.02 teaches: Il. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).
Nishimura teaches 4-dimethylaminopyridine (DMAP)[0106] as one of the examples of the amine based accelerator and 1-benzyl-2- phenylimidazole (“1B2PZ”) as the imidazole based accelerator ([0104], [0181]), wherein imidazole and pyridine compounds have different structures, then the curing temperatures of each compound are expected to be different, as required by the instant claim.
Nishimura does not teach the claimed components together in one embodiment.
However Nishimura teaches curing accelerators includes imidazole-based curing accelerators [0104], amine-based curing accelerators such as 4-dimethylaminopyridine [0106], and combinations thereof [0099-0100]. It would have been obvious to substitute the imidazole-based curing accelerator (1B2PZ in the example 3 ([0216], Table 1 original disclosure) for a combination of the imidazole compound and a pyridine compound, because Nishimura specifically teaches that these curing accelerators can be substituted and it would be expected to have a reasonable expectation of success (improve efficiency of curing) given that Nishimura teaches combinations of curing accelerators for use in the different embodiments.
Regarding claim 2, note that the discussion supra for claim 1 presently applies. Nishimura teaches the content of the curing accelerators between 0.01 wt.% by to 1 wt.% in the resin composition ([0107]).
Nishimura is silent on the claimed content of pyridine compound and the claimed content of imidazole compound in the resin composition.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of then claimed invention to envisage a 1:1 ratio when considering using a combination of accelerators in the composition of Nishimura, whereby the amounts of 0.005 wt.% to 0.5 wt.% of imidazole based accelerator and 0.005 wt.% to 0.5 wt.% of pyridine based accelerator overlaps with the claimed range (0.01-0.3 wt.% of imidazole compound and 0.01-0.3 of pyridine compound). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Nishimura.
Regarding claim 3, note that the discussion supra for claims 1 and 2 presently applies, wherein Nishimura teaches the curing accelerator includes imidazole compounds that can be used in combination of two or more types ([0100], [0104]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine a first imidazole compound and a second imidazole compound in a 1:1 ratio ( 0.005 wt.% to 0.5 wt.% of imidazole compound 1 and 0.005 wt.% to 0.5 wt.% of imidazole compound 2), that overlaps with the claimed range (0.01-0.3 wt.% of first compound and 0.01-0.3 of second compound), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 4, Nishimura teaches 20 parts of epoxy resin (ZX1059 and NC3000H) [0181], 26 parts of an active ester-based curing agent (DIC Corporation's "HP-B-8151-62T"), 3 parts of (meth)acrylic-modified polyphenylene ether resin, SA-9000, 150 parts of spherical silica "SO-C2", 0.3 parts of curing accelerator (Example 3, Table 1). Thus, after examiner’s calculation, the weight proportion of the components are 9.69 wt.% of epoxy resin, 12.6 wt.% of an active ester-based curing agent, 1.45 wt.% of (meth)acrylic-modified polyphenylene ether resin, SA-9000, 72.71 wt.% of spherical silica "SO-C2", 0.15 wt.% of curing accelerator, as required by the instant claim.
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Regarding claim 5, Nishimura teaches the resin composition comprises: a bisphenol A type epoxy resin [0013]; an active ester compound obtained by a condensation reaction between a carboxylic acid compound and a hydroxy compound which produces ester linkages (i.e. HPC-8150 same active ester disclosed in the examples of the instant specification)([0029]-[0031]); (meth)acrylic-modified polyphenylene ether resins([0090]-[0091]), spherical silica ([0078], example 1 and 3), as required by the instant claim.
Regarding claim 6, Nishimura teaches the resin composition comprises 0.3 parts of accelerator (example 3, table 1), which is less than the usage amounts of the epoxy resin, the active ester compound and the acrylate resin ( 49.3 parts by mass) (Example 3, table 1), as required by the instant claim.
Regarding claim 7, Nishimura teaches the resin composition comprises 150 parts of spherical silica SO-C2 ([0079], example 3), which is greater than the usage amounts of the epoxy resin, the active ester compound, the acrylate resin and the accelerator ( 49 parts by mass) (Example 3, table 1), as required by the instant claim.
Regarding claim 8, Nishimura teaches that the resin composition comprises a curing accelerator selected from imidazole-based curing accelerator, amine-based curing accelerator and combinations thereof [0100].
Nishimura is silent on the curing temperature of the first and second compound.
Given that Nishimura teaches a substantially identical resin system (epoxy resin/active ester resin and acrylic resin) and 4-dimethylaminopyridine (DMAP)[0106] as one of the examples of the amine based accelerator and 1-benzyl-2- phenylimidazole(“1B2PZ”) as the imidazole based accelerator ([0104], [0181]), which are the first and second compound used at the examples of the instant specification (Table 1 of USPG Pub 20250333594 A1), therefore the curing temperatures of the first and second compound are expected to be the claimed curing temperatures, as required by the instant claims.
Regarding claim 9, Nishimura teaches 4-dimethylaminopyridine as an example of the pyridine compound [0106].
Regarding claim 10, Nishimura teaches 1-benzyl-2- phenylimidazole, 1-cyanoethyl-2-phenylimidazole, 2-heptadecylimidazole [0104] as examples of the imidazole compound [0104].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-6, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-7, and 10 of copending Application No. 18/666,782 (hereinafter referred as US Appl. ‘782) in view of Nakamura (JP 2016-079366 (A)).
The claims of the US Appl. ‘782 and the present application are directed to a resin composition comprising an epoxy resin, an active ester compound, a methacrylic compound, an inorganic filler material, an accelerator, wherein the epoxy resin ranges from 5wt.% to 15wt%, a content of the active ester compound ranges from 10wt% to 20wt%, a content of the inorganic filler material is greater than 60wt%, a content of the methacrylic compound (free radical polymerizable resin) resin ranges from 1wt% to 20wt%, and a content of the accelerator ranges from 0.1wt% to 0.5wt% . The claims of the present application and US Appl. ‘782 also recite that the epoxy resin comprises a biphenyl aralkyl type epoxy resin, a bisphenol A type epoxy resin, or a combination thereof, the active ester compound comprises a polyester resin, the inorganic filler material comprises spherical silica, the accelerator comprises 4-dimethylaminopyridine, the methacrylic compound is methacrylate polyphenylene ether resin. Moreover the claims of the present application and the US Appl ‘782 recite that a usage amount of the inorganic filler material in the resin composition is greater than a usage amount of the epoxy resin, the active ester compound, the free radical polymerizable resin, and the accelerator in the resin composition.
The difference between the claims of the US. Appl. ‘782 and the present claims is that the US Appl. ‘782 does not mention the accelerator comprises a first and second compound as recited in the claim 1 of the present application.
Nevertheless, Nakamura teaches a resin composition comprising A comprising (A) an epoxy resin, (B) active ester-based curing agent, (C) an inorganic filler and curing accelerators including amine-based curing accelerators, imidazole-based curing accelerators, among others and combination of two or more types (claims and [0048]), wherein Nakamura exemplifies the use of 1.5 parts of an amine curing accelerator (4-dimethylaminopyridine (DMAP) (a MEK solution with 5% by mass of solids) and 1 part of an imidazole curing accelerator (1-benzyl-2-phenylimidazole (1B2PZ) (MEK solution with a solid content of 5% by mass) [0105] and example 1 exemplifies 35 parts of epoxy resin, 13 parts of active ester, 0.075 parts of DMAP, 0.05 parts of 1B2PZ and 180 parts of spherical silica (Table 1 of the original disclosure), thus the content of DMAP is 0.0323 wt.% and the content of 1B2PZ is 0.0215 wt.%. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the combination of the contents of accelerator DMAP and accelerator 1B2PZ with a reasonable expectation of providing an efficient curing of the epoxy/active ester/acrylic resin and to obtain the desired cure at determined temperature and time [0048]. It is noted that DMAP and 1B2PZ are the first and second compound used at the examples of the instant specification (Table 1 of USPG Pub 20250333594 A1), thereby reading on the curing temperatures of the first and second compound.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 8, and 10 of copending Application No. 18/666,773 (hereinafter referred as US Appl. ‘773) in view of Nakamura (JP 2016-079366 (A)).
The claims of the US Appl. ‘773 and the present application are directed to a resin composition comprising an epoxy resin, an active ester compound, a acrylate resin, an inorganic filler material, an accelerator, wherein the epoxy resin ranges from 5wt% to 15wt%, a content of the active ester compound ranges from 10wt% to 20wt%, a content of the inorganic filler material is greater than 60wt%, a content of the acrylate resin ranges from 1wt% to 20wt%, and a content of the accelerator ranges from 0.1wt% to 0.5wt% . The claims of the present application and US Appl. ‘773 also recite that the epoxy resin comprises a bisphenol A type epoxy resin, or a combination thereof, the active ester compound comprises a polyester resin, the inorganic filler material comprises spherical silica, the accelerator comprises 4-dimethylaminopyridine, the methacrylate resin is methacrylate polyphenylene ether resin. Moreover the claims of the present application and the US Appl. ‘773 recite that a usage amount of the inorganic filler material in the resin composition is greater than a usage amount of the epoxy resin, the active ester compound, the free radical polymerizable resin, and the accelerator in the resin composition.
The difference between the claims of the US. Appl. ‘773 and the present claims is that the US Appl. ‘773 does not mention the accelerator comprises a first and second compound as recited in the claims of the present application.
Nevertheless, Nakamura teaches a resin composition comprising A comprising (A) an epoxy resin, (B) active ester-based curing agent, (C) an inorganic filler and curing accelerators including amine-based curing accelerators, imidazole-based curing accelerators, among others and combination of two or more types (claims and [0048]), wherein Nakamura exemplifies the use of 1.5 parts of an amine curing accelerator (4-dimethylaminopyridine (DMAP) (a MEK solution with 5% by mass of solids) and 1 part of an imidazole curing accelerator (1-benzyl-2-phenylimidazole (1B2PZ) (MEK solution with a solid content of 5% by mass) [0105] and example 1 exemplifies 35 parts of epoxy resin, 13 parts of active ester, 0.075 parts of DMAP, 0.05 parts of 1B2PZ and 180 parts of spherical silica (Table 1 of the original disclosure). Thus the content of DMAP is 0.0323 wt.% and the content of 1B2PZ is 0.0215 wt.%. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the combination of the contents of accelerator DMAP and accelerator 1B2PZ with a reasonable expectation of providing an efficient curing of the epoxy/active ester/acrylic resin and to obtain the desired cure at determined temperature and time [0048]. It is noted that DMAP and 1B2PZ are the first and second compound used at the examples of the instant specification (Table 1 of USPG Pub 20250333594 A1), thereby reading on the curing temperatures of the first and second compound.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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