DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-12 is/are pending.
Claim(s) 1-12 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) 5 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 5 is vague and indefinite because there is insufficient antecedent basis for the phrase “the component (A2)” in claim 5 or parent claim 4.
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) 1-12 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 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)”; optionally corresponding to the recited “elastomer (A2)”);
(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.).
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. (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.
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.). 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, 0042-0046, 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, 8-12, 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%
Regarding claim 3, 5, one of ordinary skill in the art would have incorporate effective amounts of low molecular weight (e.g., Mn less than 10,000) styrene-based elastomers as part of the resin component 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; 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 claim 7, 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 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
YOSHIKAWA ET AL (US 2018/0242448) and HIGASHITA ET AL (US 2021/0229407) and YOSHIHARA ET AL (US 2018/0298186) and KASAHARA ET AL (US 2019/0284395) and FUJIMOTO ET AL (US 2010/0129676) and MIZUNO ET AL (US 2010/0233495) and NAMEKATA ET AL (US 2021/0002475) and LANDI ET AL (US 2003/0075270) disclose elastomer-based resin curable resin compositions containing inorganic filler used in the production of copper-clad laminates used in the production of printed wiring boards.
NAKANISHI ET AL (US 2005/0195519) disclose curable resin compositions used in the product of printed wiring boards which can be used solventless.
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.
December 13, 2025
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
Prosecution Insights