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 amended 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.
Claim 6 is 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.
Regarding claim 6, the phrases “biphenyl aralkyl type epoxy resin”, “bisphenol A type epoxy resin” (Emphasis added) renders the claim indefinite because of the use of “type”, since the claims include elements not actually disclosed (those encompassed by “type”), thereby rendering the scope of the claims unascertainable. See Ex parte Copenhaver, 109 USPQ 118. See MPEP 2173.05(b) (sections E-F). It is not clear what is meant by the term "type" because the present specification merely repeats what is in the claims without further explanation, definition or much guidance from the instant specification (see, for example, paragraphs [0010] and [0026] of applicants' published application, i.e., US PG Pub. 2025/0333595 A).
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 10 is rejected under 35 U.S.C. 112(d) or pre-AlA 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 1 defines “the olefin compound comprises a methacrylic compound, a styrene compound, an allyl compound”. Claim 10 is intended to limit claim 1, specifically the olefin compound, to be “methacrylate polyphenylene ether resin, a hydrogenated styrenic elastomer, a vinyl benzyl polyphenylene ether resin, a hydrocarbon resin, a polybutadiene resin, or a combination thereof”. Therefore, the claim 10 broadens claim 1, since the polyolefin compound does not have to be at least the methacrylic compound, a styrene compound, an allyl compound or a combination thereof. The polybutadiene and the hydrocarbon resin are different than a methacrylic compound, a styrene compound or an allyl compound. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) 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 (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 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 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (JP 2022-108927 A as listed on the IDS dated 10/07/2025, full English Machine translation incorporated herewith).
Regarding claim 1, Nakamura teaches a resin composition comprising (A) an allyl compound having an alicyclic structure (which read on the radical polymerizable compound), (B) an epoxy resin, (C) an active ester compound, (D) a (meth)acrylic acid ester compound (which also reads on the radical polymerizable compound) [0101], ( E ) an inorganic filler, (F) a radical polymerizable compound including (meth)acrylic-modified polyphenylene ether resins and styrene based compounds (claims 1, 8, 11, [0016], [0124]-[0127]), a curing accelerator ([0132]-[0142], claim 13), as required by the instant claim.
Regarding claim 2, Nakamura teaches the resin composition comprises one or more radical polymerizable compound, wherein the radical polymerizable compound has unsaturated hydrocarbon groups such as allyl groups among others [0124]. Nakamura further teaches (meth)acrylic radical polymerizable compounds, styrene radical polymerizable compounds, among others as examples of the radical polymerizable compound [0123]-[0125]. Furthermore, Nakamura teaches (meth)acrylic acid ester compounds with a molecular weight of less than 1000 are radical polymerizable compounds having one or more acryloyl groups and/or methacryloyl groups in one molecule [0101]. Additionally, Nakamura exemplifies combinations of free radical polymerizable compounds such as allyl FACTC-809 and methacrylic-modified polyphenylene ether (SABIC Innovative Plastics, Ltd. "SA9000-111" ( example 7 [0227], as required by the instant claim.
Regarding claim 3 , Nakamura teaches the resin composition comprises (meth)acrylic radical polymerizable compounds including "SA9000" and "SA9000-111" (methacrylic-modified polyphenylene ether resin) manufactured by SABIC Innovative Plastics ([0126], example 7 [0227]).
Regarding claim 4, Nakamura teaches the content of radical polymerizable compounds is preferably 0.5% by mass or more to 10% by mass or less [0131]. The example 7 discloses 10 parts epoxy resin, 2 parts of an allyl compound FACT-809, 4 parts of acrylic acid ester "A-DOG", 30 parts of active ester compound "HPC-8150-62T", 93 parts of spherical silica "SO-C2", 2 parts of triazine skeleton-containing phenolic curing agent "LA-3018-50P4”, 5 parts of a carbodiimide-based curing agent (V-03), 0.1 parts of an imidazole-based curing accelerator (1B2PZ, manufactured by Shikoku Chemicals Co., Ltd., 1-benzyl-2-phenylimidazole), and 2 parts of a phenoxy resin (YX7553BH30) (Table 1 of original disclosure, Examples 7 , [0221],[0227]). By examiner’s calculation the content of the SA9000 (methacrylic compound) in example 7 is approximately 1.3 wt.% in the resin composition, as required by the instant claim.
Regarding claim 5, Nakamura teaches 0.01 wt.% to 5 wt.% of (A) an allyl compound ([0064], claim 5), 5-15 wt.% of (B) an epoxy resin [0078], 10 wt.% to 20 wt.% of (C) an active ester compound ([0085], claim 10), 0 to 5 wt.% of (D) a (meth)acrylic acid ester compound ([0101],[0109]), 60 wt.% or more of ( E ) an inorganic filler ([0121], claim 12), 0.5 wt.% to 25 wt.% of (F) a radical polymerizable compound [0131 and 0.05 to 1 wt.% of a curing accelerator [0142]. Nakamura further exemplifies at example 7 a resin composition comprising 6.7 wt.% (i.e. 10/150.1 ) of epoxy resin, 20 wt.% of an active ester, 62 wt.% of inorganic filler, 2.65 wt.% of SA-9000-111 and allyl compound FACT-809 (which correspond to the free radical polymerizable resin), and 0.1 wt.% of a curing accelerator (Table 1, Example 7), as required by the instant claim.
Regarding claims 7-9, note that the discussion for claim 5 presently applies, wherein the usage amount of the inorganic filler material (E) ) is greater than the usage amount of the epoxy resin, active ester compound, free radical polymerizable resin and the accelerator (B+C+D+F+G) in the resin composition, wherein the usage amount of free radical polymerizable resin (F) is greater than the usage amount of the accelerator (G) in the resin composition and wherein the usage amount of the free radical polymerizable resin (F) is less than the usage amount of the epoxy resin (B) in the resin composition (Table 1, Example 7).
Table 1
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717
1233
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Greyscale
Regarding claim 10, Nakamura teaches the resin composition, wherein the radical polymerizable compound comprises a methacrylic polyphenylene ether resin (SA-9000-111, which is used in the example of the instant specification, table 1 ), vinyl benzyl-modified polyphenylene ether resin ([0126]- [0127] and example 7, table 1).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (JP 2022-108927 A as listed on the IDS dated 10/07/2025, full English Machine translation incorporated herewith).
Regarding claim 6, Nakamura teaches the resin composition of claim 1 as set forth above and it is incorporated herein by reference. Nakamura teaches the resin composition wherein the epoxy resin includes bisphenol A type epoxy resin, bisphenol AF type epoxide resin [0070], a mixture of bisphenol A-type epoxy resin and bisphenol F-type epoxy resin such as ZX1059, and combinations thereof [0071]. Nakamura further teaches the curing accelerator includes imidazole curing accelerator, amine curing accelerators such as 4-dimethylaminopyride ([0133], [0140]), which can be used alone or in combination thereof. Nakamura exemplifies a resin composition comprising ZX1059 epoxy resin which is a mixture of bisphenol A-type epoxy resin and bisphenol F-type epoxy resin, an active polyester HPC-8150 62T ([0081]-[0083]) (same polyester used in the examples of the instant specification), spherical silica SO-C2 as the inorganic filler, and an imidazole curing accelerator 1B2PZ (Example 7, Table 1).
Nakamura does not teach the claimed components together in one embodiment.
It would have been obvious to substitute the ZX1059 epoxy resin and the imidazole curing agent in the example 7, (table 1) for bisphenol A type epoxy resin and 4-dimethylaminopyridine respectively, because Nakamura specifically teaches that these epoxy resins and these curing agents can be substituted and it would be expected to have a reasonable expectation of success given that Nakamura teaches them as potential epoxy resin and potential curing accelerators for use in the different examples.
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 1-3 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/666,773 (hereinafter referred as US Appl. ‘773) in view of Nakamura (JP 2022-108927 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, an acrylate resin that comprises a methacrylate polyphenylene ether resin, an inorganic filler material, and an accelerator.
The difference between the claims of the US. Appl. ‘773 and the present claims is that the US
Appl. ‘773 does not mention the methacrylate polyphenylene ether resin as a free radical polymerizable resin as recited in the claims of the present application.
Nevertheless, Nakamura teaches a resin composition comprising (A) an allyl compound having an alicyclic structure (which read on the radical polymerizable compound), (B) an epoxy resin, (C) an active ester compound, (D) a (meth)acrylic acid ester compound [0101], ( E ) an inorganic filler, (F) a radical polymerizable compound and a curing accelerator ([0132]-[0142], claim 13), wherein the radical polymerizable compound has ethylenically unsaturated bonds (olefins) including (meth)acrylic radical polymerizable compounds such as methacrylic -modified polyphenylene ether resin, SA-9000 (which is the methacrylic polyphenylene ether resin used in the instant specification); or styrene radical polymerizable compounds ([0124]-[0127]). Given the above teachings, it is reasonable to infer that the methacrylic-modified polyphenylene ether resin is an olefinic compound capable of free radical polymerization, therefore, the specific methacrylic-modified polyphenylene ether resin reads on the methacrylic compound of the instant claims 1-3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/665,582 (hereinafter referred as US Appl. ‘582) in view of Nakamura (JP 2022-108927 A).
The claims of the US Appl. ‘582 and the present application are directed to a resin composition
comprising an epoxy resin, an active ester compound, an acrylic resin that comprises a methacrylate polyphenylene ether resin, an inorganic filler material, and an accelerator.
The difference between the claims of the US. Appl. ‘582 and the present claims is that the US
Appl. ‘582 does not mention the methacrylate polyphenylene ether resin as a free radical polymerizable resin as recited in the claims of the present application.
Nevertheless, Nakamura teaches a resin composition comprising (A) an allyl compound having an alicyclic structure, (B) an epoxy resin, (C) an active ester compound, (D) a (meth)acrylic acid ester compound [0101], ( E ) an inorganic filler, (F) a radical polymerizable compound and a curing accelerator ([0132]-[0142], claim 13), wherein the radical polymerizable compound has ethylenically unsaturated bonds (olefins) including (meth)acrylic radical polymerizable compounds such as methacrylic -modified polyphenylene ether resin, SA-9000 (which is the methacrylate polyphenylene ether resin used in the instant specification); or styrene radical polymerizable compounds ([0124]-[0127]). Given the above teachings, it is reasonable to infer that the methacrylic-modified polyphenylene ether resin is an olefinic compound capable of free radical polymerization, therefore, the specific methacrylic-modified polyphenylene ether resin reads on the methacrylic compound of the instant claims 1-3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
JP 2023-068335
KR 2022-0103061
JP 2022-133793A, TW 202346444 (listed on the IDS)
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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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