DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-20 is/are pending.
Claim(s) 1-20 is/are rejected.
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 .
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.
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(s) 13 is/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 13 is vague and indefinite because the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103 (AIA )
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2017-171890 (KONDO-JP ‘890),
in view of YAMAMOTO ET AL (US 2021/0040360),
and in view of IBATA ET AL (US 3,925,272),
and in view of KRANNIG ET AL (US 2023/0174752),
and in view of CRAY VALLEY PRODUCT GUIDE,
and in view of MOLECULAR WEIGHT - UNIVERSITY OF CAMBRIDGE.
KONDO-JP ‘890 discloses curable resin compositions comprising:
(i) a resin component comprising:
(1) 60-85 wt% of one or more styrene-based thermoplastic elastomer(s) (corresponding to recited “elastomer (A1)”);
(2) a thermosetting resin (corresponding to the recited “thermosetting resin (A3)”);
(ii) 54-85 wt% of an inorganic filler component (corresponding to recited component “inorganic filler (B)”) comprising one or more inorganic fillers (e.g., silica, alumina, titania, zirconia, glass, silicon carbide, aluminum nitride, boron nitride, etc.), wherein glass fiber is not required in the curable resin compositions;
(iii) other optional components (e.g., but not limited to, flame retardants, property modifiers, etc.).
The curable resin composition can be used to form cured coatings, layers, and films for: heat dissipation components; an interlayer adhesive; an insulating layer; etc., which are useful in the production of printed wiring boards (e.g., containing copper foil layers, etc.) and semiconductor devices containing said cured coatings and films. The thickness of films formed from the curable resin composition is not particularly limited (e.g., but not limited to, 50 microns or less, etc.), wherein the films can be formed by:
• providing a liquid composition of the curable resin composition to a release-treated support;
• drying the liquid composition to form a cured resin composition film.
(entire document, e.g., paragraph 0001, 0006-0008, 0011-0012, 0015-0018, 0021-0023, 0025-0026, 0040, etc.) However, the reference does not specifically discuss the molecular weight of one or more elastomers, or the use of low molecular weight polybutadiene homopolymers.
YAMAMOTO ET AL ‘360 discloses that it is well known in the art to use styrene-based elastomers with weight-average molecular weights (Mw) of 100,000 or more as components in curable elastomer-based compositions used as adhesives and/or interlayers for metal-clad laminates for circuit boards or printed wiring boards (PWD) (e.g., flexible printed wiring boards (FPC), etc.), wherein the adhesive and/or interlayers can have, but is not limited to, a typical thickness of up to 100 microns, wherein the thickness of the adhesive layer “may be appropriately set according to the purpose”. The reference further discloses that such printed wiring boards have a typical structure comprising a copper-clad laminate (CCL) laminated to additional layers via the elastomer-based composition. (paragraph 0017-0023, 0039-0040, 0042-0046, etc.)
IBATA ET AL ‘272 discloses that it is well known in the art to utilize plasticizers (e.g., low molecular weight polybutadiene polymers; etc.) as additives in elastomer-containing compositions (e.g., styrene-butadiene-based block elastomers, etc.) in order to modify various performance properties (e.g., processibility, tensile strength, elongation, elasticity, etc.). (line 14-17, 31-65, col. 3; line 67, col. 5 to line 7, col. 6; etc.).
KRANNIG ET AL ‘752 discloses that it is well known in the art to incorporate liquid polybutadienes (e.g., RICON 131, available from Cray Valley; etc.) as processing aids and/or non-migrating reactive plasticizers in rubber-based compositions (e.g., styrene-butadiene-based elastomers; etc.) in order to improve processing characteristics and/or to adjust the mechanical and/or dynamic mechanical properties to meet the requirements for specific use applications. (paragraph 0015-0019, 0021-0023, 0030-0031, 0056, etc.)
CRAY VALLEY PRODUCT GUIDE provides evidence that the RICON 130 and 150 product series (available from Cray Valley) encompass liquid polybutadiene homopolymers containing 1,2-vinyl units, wherein the polybutadiene homopolymers have number average molecular weights (Mn) of 8,000 or less (e.g., RICON 130, 131, 134, 138, 150, 152, 153, 154, etc.) (corresponding to the recited “polybutadiene based elastomer (A2) comprising a butadiene homopolymer having a number average molecular weight of less than 10,000” of claim 1; corresponding to the recited “polybutadiene based elastomer (A2) comprises 1,2-polybutadiene homopolymer” of claim 3), wherein the RICON product series of liquid polybutadienes are useful as: (i) processing aids; and/or (ii) performance property modifiers (e.g., viscoelastic properties; toughness properties; electrical and/or dielectric properties for use in copper clad laminate (CCL) applications; processibility; mechanical properties, adhesion properties, etc.); and/or (iii) curing coagents; for rubber and elastomer compositions. (page 4-7, etc.)
MOLECULAR WEIGHT - UNIVERSITY OF CAMBRIDGE discloses that it is well known in the art that for polymers, the weight-average molecular weight (Mw) is equal to or greater than the number-average molecular weight (Mn) (i.e., the polydispersity index Mw/Mn is 1 or more). (entire document, e.g., page 3, etc.)
Regarding claims 1-2, 4-5, 8-17, 19-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known styrene-based elastomers with relatively high molecular weights (as suggested in YAMAMOTO ET AL ‘360) as at least part of the resin component in the curable resin compositions of KONDO-JP ‘890 in order to produce adhesive compositions useful in the production of printed wiring boards (e.g., including metal-clad laminate components, etc.).
Further regarding claim 1, since: (i) YAMAMOTO ET AL ‘360 discloses styrene-based elastomers with weight-average molecular weight (Mw) of 100,000 or more; (ii) MOLECULAR WEIGHT - UNIVERSITY OF CAMBRIDGE discloses that the number-average molecular weight (Mn) is typically less than the Mw for a given polymer; and (iii) except for the rare instance of monodisperse polymers (Mw = Mn), styrene-based elastomers generally have polydispersity index (Mw/Mn) values of 1.05-5, and as high as 20 (depending on the specific polymerization method used); the Examiner has reason to believe that the known or commercially available styrene-based elastomers with weight-average molecular weights (Mw) of 100,000 or more (as suggested in YAMAMOTO ET AL ‘360) would have Mn values which at least partially overlap the Mn values recited in claim 1 (i.e., Mn greater than 10,000), therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Further regarding claim 1, since:
(i) KONDO-JP ‘890 discloses curable resin composition containing 54-85 wt% of an inorganic filler component (corresponding to recited component “inorganic filler (B)”);
(ii) elastomers and thermosetting resins typically have densities of about 0.9-1.5 g/cm3;
(iii) many inorganic fillers disclosed in KONDO-JP ‘890 (e.g., silica, alumina, titania, glass, silicon carbide, aluminum nitride, boron nitride, etc.) have densities of 2-4 g/cm3, while zirconia has a density of about 6 g/cm3;
KONDO-JP ‘890 discloses or at least reasonable suggests curable resin compositions which can contain 40 vol% or more inorganic fillers (and for inorganic fillers with densities of less than 4 g/cm3, 60 vol% or more) -- for example:
• assuming a resin component with a density of about 1 g/cm3
• inorganic filler density of about 2 g/ cm3) -> 85 wt% ≈ 74 vol%
• inorganic filler density of about 3 g/ cm3) -> 85 wt% ≈ 65 vol%
• inorganic filler density of about 4 g/ cm3) -> 85 wt% ≈ 59 vol%
• inorganic filler density of about 5 g/ cm3) -> 85 wt% ≈ 53 vol%
• inorganic filler density of about 6 g/ cm3) -> 85 wt% ≈ 49 vol%
• assuming a resin component with a density of about 1.2 g/cm3
• inorganic filler density of about 4 g/ cm3) -> 85 wt% ≈ 63 vol%
• assuming a resin component with a density of about 0.9 g/cm3
• inorganic filler density of about 3 g/ cm3) -> 85 wt% ≈ 63 vol%
Further regarding claims 1, 3, one of ordinary skill in the art would have incorporated effective amounts of known additives (e.g., low molecular weight polybutadiene polymers as suggested in IBATA ET AL ‘272 -- for example, commercially available liquid polybutadiene homopolymers as suggested in KRANNIG ET AL ‘752, such as the RICON liquid butadiene homopolymers available from Cray Valley which have Mn values of 8,000 or less and containing 1,2-vinyl units, as evidenced by CRAY VALLEY PRODUCT GUIDE) as processing aids and/or non-extractable reactive plasticizers in the curable resin compositions of KONDO-JP ‘890 in order to improve processibility and/or to adjust the mechanical and elastic properties of the resulting cured resin composition for specific applications (as suggested in IBATA ET AL ‘272 and KRANNIG ET AL ‘752 and CRAY VALLEY PRODUCT GUIDE).
Regarding claim 5, one of ordinary skill in the art would have incorporate effective amounts of known low molecular weight (e.g., Mn less than 10,000) polybutadiene homopolymers in the curable resin compositions of KONDO-JP ‘890 as a functional additive to modify various performance properties (e.g., to improve toughness or impact resistance; improve adhesion characteristics; modify flexibility and/or tensile properties; improve processing characteristics; etc.).
Regarding claim 6, one of ordinary skill in the art would have selected the drying and curing conditions of organic solvent-containing coating and film-forming compositions containing the curable resin composition of KONDO-JP ‘890 so as to fully remove the organic solvent and thereby form cured coatings and/or films which contain no or very low levels of organic solvent in order to prevent undesirable outgassing of residual organic solvent (which may cause bubbles or defects) during subsequent manufacturing operations (e.g., lamination during the lamination of printed wiring boards or metal-clad laminates or semi-conductor devices, etc.).
Regarding claims 7, 20, the curable resin compositions of KONDO-JP ‘890 (and cured resin layers or films formed therefrom) do not require the presence of glass fiber.
Regarding claim 10, one of ordinary skill in the art would have used the curable resin compositions of KONDO-JP ‘890 to form conventional components used in the production of printed wiring boards (e.g., cured resin / copper foil laminates (corresponding to the recited “metal-clad laminated board”) as suggested in KONDO-JP ‘890 and YAMAMOTO ET AL ‘360).
Regarding claim 18, one of ordinary skill in the art would have selected the thickness (e.g., over 50 microns, such as up to 100 microns as suggested in YAMAMOTO ET AL ‘360) of films made from the cured resin compositions of KONDO-JP ‘890 based the particular structural and/or mechanical and/or electrical and/or adhesion requirements for specific applications.
Regarding claim 19, one of ordinary skill in the art would have removed the cured resin composition film layer of KONDO-JP ‘890 from a release-treated support used to form the cured resin composition film layer (corresponding to the recited “peeling off the support medium from the resin sheet”) in order to produce adhesive films or layers which are adhesive on both sides and therefore can be used as bonding layers and/or interlayers between other layers for electronic devices or circuitry.
Additionally and/or alternatively, regarding claim 19, the recited method of producing the resin sheet is a product-by-process limitation and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). See MPEP 2113. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the product is unpatentable even though the prior product was made by a different process. The patentability of a product is based on the product itself, and is not dependent on its method of production.
Regarding MOLECULAR WEIGHT - UNIVERSITY OF CAMBRIDGE, in certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). See MPEP 2124.
Response to Arguments
Applicant’s arguments filed 03/06/2026 have been considered but are moot because the new ground of rejection necessitated by the Claim Amendments filed 03/06/2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
May 26, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
Prosecution Insights