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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (WO 2019/142752, please refer to US 2020/0354564 for English language equivalent).
Regarding claims 1-6, Noguchi teaches a thermosetting resin composition comprising a thermosetting resin, a curing agent and a filler ([0034]). The thermosetting resin is an epoxy resin such as an epoxy resin ([0035]) such as EPDX MK R710 ([0082]) and an imidazole curing agent ([0040]) such as 2MZA ([0046]) in the amount of 1 to 35 parts by mass ([0048]) and a filler in the amount of 10 to 1000 parts by mass ([0050]). The filler can be barium sulfate, spherical silica and calcium carbonate ([0049]-[0051]).
Noguchi fails to specifically exemplify the exact thermosetting resin composition. However, Noguchi discloses each of the components of the resin, and teaches that they are all suitable for use in the composition. It is within the ordinary level of skill in the art to make any of the resins suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the resins suggested by Noguchi, including the claimed composition. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Noguchi to arrive at the presently claimed invention. It would have been nothing more than using known compounds in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Given that these components are all the exact same components used in the instant specification, it would inherently have the desired L* values which satisfy the ratio recited in the Formulas.
Regarding claim 7, it is noted that this has intended use limitations which do not carry much patentable weight.
Regarding claims 8-9, Noguchi teaches a cured product such as a printed wiring board made from the composition of claim 1 ([0001]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764