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 .
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.
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Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 9-15 of copending Application No. 18859741, hereafter ‘741, in view of Kawahara et al. (WIPO Pub. No. 2021182207 A1, machine translation), hereafter referred to as Kawahara.
Regarding claim 1, ‘741’s claim 1 claims a maleimide resin obtained by reacting a tetracarboxylic dianhydride (a1), an amine (a2), and maleic anhydride (a3), wherein the amine (a2) contains a dimer diamine and a second amine other than the dimer diamine, and at least one of the tetracarboxylic dianhydride (a1) and the amine (a2) contains a compound having a fluorene skeleton.
Kawahara teaches a maleimide resin composition derived from maleic anhydride, norbornane diamine (NBDA), 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and dimer diamine, where the 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride reads on instant Formula (6) and NBDA reads on the second non-dimer diamine (pgs. 4, 6, 12, 31 [0015, 0022, 0054-0055, 0148]).
Additionally, ‘741’s claim 2 cites 1,3,3a,4,5,9b-hexahydro-5-(tetrahydro-2,5-dioxo-3- furanyl)naphtho[1,2-C]furan-1,3-dione, which reads on instant’s formula (2).
It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art at the time of filing to select NBDA of Kawahara as the second amine and a tetracarboxylic dianhydride according to instant’s Formulae (1), (2), and/or (6) in claim 1 as it is recognized by Kawahara as being suitable for use in this capacity. Therefore, instant claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of ‘741.
Regarding claim 2, ‘741 claims the maleimide discussed in (8, 11-12) and further claims in claim 3 that the second amine includes NBDA. ‘741’s claim 3 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12) teaches the features of the instant’s claim 2.
Regarding claim 3, ‘741 claims the maleimide discussed in (8, 11-12) and further claims in claim 4 the dimer diamine to be represented by formulae that are not patently distinct from instant’s Formulae (3) and (4). ‘741’s claim 3 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12) teaches the features of the instant’s claim 2.
Regarding claim 4, ‘741 claims the maleimide discussed in (8, 11-12) and further claims in claim 5 for the average molecular weight to range between 3000 and 30000. ‘741’s claim 5, while a larger range than the instant, falls within the scope of the application and, along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 4.
Regarding claim 5, ‘741 claims the maleimide discussed in (8, 11-12) and further claims in claim 9 a cured product comprised of the maleimide composition. ‘741’s claim 9 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 5.
Regarding claim 6, ‘741 claims the maleimide discussed in (8, 11-12, 16) and further claims in claim 10 a sheet comprised of the maleimide composition and a base material. ‘741’s claim 10 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 6.
Regarding claim 7, ‘741 claims the maleimide discussed in (8, 11-12, 16-17) and further claims in claim 11 a sheet comprised of the maleimide composition and an organic base material. ‘741’s claim 11 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 7.
Regarding claim 8, ‘741 claims the maleimide discussed in (8, 11-12, 16-17) and further claims in claim 12 a sheet comprised of the maleimide composition and an inorganic base material. ‘741’s claim 12 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 8.
Regarding claim 9, ‘741 claims the maleimide discussed in (8, 11-12, 16-17) and further claims in claim 13 a sheet comprised of the maleimide sheet on a base material formed into a laminate via thermocompression. ‘741’s claim 13 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 9.
Regarding claim 10, ‘741 claims the maleimide discussed in (8, 11-12, 16-17) and further claims in claim 14 a printed wiring board obtained using a sheet comprised of the maleimide composition and base material. ‘741’s claim 14 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 10.
Regarding claim 11, ‘741 claims the maleimide discussed in (8, 11-12, 16-17, 20) and further claims in claim 15 a printed wiring board obtained using a thermo-compressed laminate sheet comprised of the maleimide composition and base material. ‘741’s claim 15 along with the Kawahara’s disclosure (10) and the obviousness rationale discussed in (11-12), teaches the features of the instant’s claim 11.
This is a provisional nonstatutory double patenting rejection. These are a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities: Formula (6) is represented by (6) but also is headed by "[Chemical Formula 3]" (pg. 5, lines 1-5). Similar issues are present on pages 8, 10, 11 with Formulae (1) - (6). Additionally, several headings seem to have “<” and “>” or brackets on either side of the text (non-exhaustive examples on pg. 26, 33-35).
Appropriate correction is required.
The abstract of the disclosure is objected to because Formula (6) is represented by (6) but also is headed by "[Chemical Formula 3]". A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
Regarding claim 1, “contains” is considered as transitional phrase equivalent to comprising, which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. For more information, see MPEP § 2111.03.
Regarding claim 1, the phrase “comprising a maleimide resin (A) obtained by…” is considered to be a product-by-process limitation.
Therefore, a prior art teaching the maleimide resin derived from or including units derived from (a1), (a2), and (a3) should anticipate or make obvious the claimed invention.
Regarding claim 9, the phrase “laminated body obtained by allowing another base material to be thermocompression bonded to an adhesive surface of the sheet” is considered to be a product-by-process claim.
Therefore, a prior art teaching the adhesion of a base material to a sheet according to claim 6 should anticipate or make obvious the claimed invention.
When a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. For more information, see MPEP § 2113.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Formula (6) is represented by (6) but also is headed by "[Chemical Formula 3]".
Claim 1 does not end with appropriate punctuation after Formula (6). Claims must be appropriately punctuated.
Formulae (3) and (4) have similar informalities to Formula (6), headed by "[Chemical Formula 4]" and "[Chemical Formula 5]".
Claim 3 does not end with appropriate punctuation, ending with a bracket after a period. Claims must be appropriately punctuated.
Appropriate correction is required. For more information, see MPEP § 608.01(m).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kawahara et al. (WIPO Pub. No. 2021182207 A1, machine translation), hereafter referred to as Kawahara.
Regarding Claims 1 and 2, Kawahara teaches a maleimide resin composition derived from maleic anhydride, norbornane diamine (NBDA), 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and dimer diamine, where the 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride reads on instant Formula (6) and NBDA reads on the second non-dimer diamine in both claims 1 and 2 (pgs. 4, 6, 12, 31 [0015, 0022, 0054-0055, 0148]). This is exemplified in formula (X3), with the instant’s components labeled below for convenience (pgs. 4-5, [0017]).
[AltContent: ][AltContent: textbox (Maleic anhydride)][AltContent: textbox (Dimer diamine (Priamine 1075))][AltContent: ][AltContent: textbox (Formula (6))][AltContent: ][AltContent: textbox (NBDA)][AltContent: ]
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Kawahara teaches this further in Synthesis Example 3, reacting a dimer diamine (brand name Priamine 1075), NBDA, 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and maleic anhydride to produce the compound according to Formula (X3) (pgs. 4-5, 47, 49-50 [0017, 0234, 0242]).
Regarding claim 3, Kawahara teaches the maleimide resin composition discussed in (37-38). Briefly, Kawahara teaches the composition derived from maleic anhydride, norbornane diamine (NBDA), 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and dimer diamine, where the 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride (pgs. 4, 6, 12, 31 [0015, 0022, 0054-0055, 0148]). Kawahara further discloses the dimer diamine can be chosen among Versamine 551 (trade name, 3,4-bis (1-aminoheptyl)-6-hexyl-5-(1-octenyl) cyclohexene, manufactured by BASF Japan Inc.), Versamine 552 (product name, hydrogenated product of Versamine 551, manufactured by Cognitive Japan Co. Ltd.), Priamine 1075, and Priamine 1074 (trade name, all manufactured by Clod Japan Co. Ltd.) (pg. 12, [0054-0055]). Priamine 1075, as exemplified in the labeled Formula (X3) above, reads on Formula (3), where q=6, n=6, m=4, and p=6 (pgs. 4-5, [0017]).
Regarding claim 4, Kawahara teaches the maleimide composition discussed in (37-38), where the molecular weight of the compound is not less than 3000 and not more than 20000. Kawahara’s range overlaps with sufficient specificity to anticipate the claimed range. For more information, see MPEP § 2131.03.
Regarding claims 5 and 6, Kawahara teaches the maleimide composition discussed in (37-38) comprised of reacting a dimer diamine, a non-dimer diamine, a dianhydride according to instant Formula (6), and maleic anhydride (pgs. 4, 6, 12, 31 [0015, 0022, 0054-0055, 0148]). Kawahara further teaches the composition is then cured into a resin film sheet and laminated onto a base film or metal foil (pgs. 38-40, [0187-0188, 0192, 0195]).
Regarding claims 7 and 8, Kawahara teaches the laminated maleimide sheet discussed in (37-38, 41), where the maleimide composition is laminated as a film onto a metal foil such as copper foil or a base film (pgs. 38-40, [0187-0188, 0192, 0195]).Kawahara teaches examples of the base film to include polyester resin film such as a polyethylene terephthalate film and a polybutylene terephthalate film, an olefin resin film such as a polyethylene film and a polypropylene film, and a polyimide resin film (pgs. 39, [0193]).
Regarding claim 9, Kawahara teaches the laminated film sheet discussed in (37-38, 41), further teaching the resin composition to be attached to another base material and the sheet to exert adhesive strength on the surface during lamination, which can be achieved via a lamination including heat and pressure in roll lamination or parallel flat press machine (pgs. 25, 41-42, [0116, 0205]).
Regarding claim 10, Kawahara teaches the laminated film sheet discussed in (37-38, 41), further teaching a printed wiring board can obtained, for example, by heating and pressing the resin material (pg. 41, [0204]).
Regarding claim 11, Kawahara teaches the laminated film sheet discussed in (37-38, 41, 43) comprised of reacting a dimer diamine, a non-dimer diamine, a dianhydride according to instant Formula (6), and maleic anhydride that is then cured into a resin film sheet and laminated via heat and pressure onto a base film or metal foil (pgs. 4, 6, 12, 31, 38-40, [0015, 0022, 0054-0055, 0148, 0187-0188, 0192, 0195]). Kawahara further teaches a printed wiring board is obtained via heating and pressing the resin material. Kawahara additionally teaches a multilayer substrate comprised of a copper-clad laminate of the laminated sheet where the copper is etched to form a circuit. This etched laminate is then attached to a board (pgs. 41-43, [0204, 0209, 0211, 0215]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sato et al. (WIPO Pub. No. 2022025123 A1, machine translation) discloses a bismaleimide resin formed by reacting aromatic tetracarboxylic acid (a1), a dimer diamine (a2), and maleic anhydride (a3); and (B) an inorganic filler.
Mizuno et al. (JP 2020196789 A, machine translation) discloses a bismaleimide resin (A), an epoxy resin (B), an active ester-based curing agent (C) and a curing accelerator (D).
Sato et al. (JP 2020045446 A, machine translation) discloses a bismaleimide resin obtained by reacting a dimer diamine being a diamine derived from a dimer acid with maleic anhydride, and at least one of a polymerization initiator and a curing accelerator.
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/ARMAN M. FARAZDAGHI/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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