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
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 1-9 and 11-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US 2011/0139496, of record, ‘496 hereafter).
Regarding claims 1-6, ‘496 discloses a resin composition comprising a dielectric powder being inorganic particles including silica, titanium dioxide, barium titanate, or strontium titanate, with a particle size being in a range of 0.05 to 5 microns ([0009], [0035]-[0036], Example 1); a cyanate ester compound being phenol novolac-type cyanate ester compounds, bisphenol A-type cyanate ester compounds or the like as in the present claim 5 ([0012]-[0017], Examples); and an epoxy compound being naphthylene ether-type epoxy resins as in the present claim 6 ([0018]-[0022], Examples ); wherein a functional group equivalent ratio of a cyanate group of the cyanate ester compound to an epoxy group of the epoxy compound (cyanate group/epoxy group) is 0.2 to 2.0 ([0023], Examples), and content of the inorganic particles can be in a preferred range of 30 to 80 mass% based on the total composition ([0039]), satisfying present claim 4 (52/30=173/100 as in Example 1, [0125]).
Regarding claims 7-9, ‘496 also discloses that the composition further include one or more thermosetting compound such as another epoxy resin or a phenolic compound ([0046]-[0056]); and a filler such as rubber powder, silicone powder or fire retardant such as aluminum hydroxide ([0060]-0064], [0072]).
Regarding claims 11-18, ‘496 also discloses a resin composition, a prepreg, a resin sheet, a laminate and a printed wiring board comprising the resin composition and other components as presently claimed ([0074]-[0111]).
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 2011/0139496, of record, ‘496 hereafter).
Regarding claim 10, ‘496 teaches all the limitations of claim 8, ‘496 also discloses that the composition may further comprise another filler such as aluminum hydroxide as a flame retardant ([0064]) to adjust its flame retardancy, but ‘496 does not specifically set forth the content of the filler in the composition. However, it is well-known in the art that the flame retardancy of a composition directly depends upon the amount of flame retardant being used in the composition, thus the content of a flame retardant in the composition is an effective variable which can be adjusted to render the composition having desired flame retardancy without undue experimentation. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the amount of aluminum hydroxide particles within the scope of the present claims so as to produce sufficient flame retardancy.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Morishita et al (JP 2007/131842A). Morishita discloses a resin composition comprising a dielectric powder being inorganic particles titanium dioxide, ([0005]-[0010]); a cyanate ester compound being phenol novolac-type cyanate ester compounds ([0005]-[0010]); and a novolak epoxy compound ([0005]-[0010]); and the composition can be used as a prepreg to make copper-clad laminate and other articles ([0005], [0016]-[0019]).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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