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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 22 May 2024, 08 October 2024, and 26 November 2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Yahata (US-20210309917-A1) in view of Mikami (WO-2018030026-A1, located in Information Disclosure Statement).
With regard to claim 1, Yahata teaches a flame retardant for a thermosetting resin containing an aromatic phosphoric acid ester represented by the general formula (I) (Abstract):
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wherein R1 to R4 each independently represent a hydrogen atom, a C1-4 alkyl group, or a C1-4 alkoxy group; R5, R6, and R9 each independently represent a C1-10 alkyl group or a C1-10 alkoxy group; R7 and R8 each independently represent a C1-4 alkyl group or a C1-4 alkoxy group; n represents an integer of 1 to 10; n1 and n2 each independently represent an integer of 0 to 3; m1 and m2 each independently represent an integer of 0 to 4; p represents an integer of 0 to 26; and k represents an integer of 1 to 12; and when p is 2 or more, any two substituents R9 may be bonded to each other, and may be bonded to a carbon atom(s) of a ring to which the above substituents R9 are bonded, forming another ring. This specific aromatic phosphoric acid ester formula reads on the alicyclic structure within a molecule and corresponds to the chemical formulas (1)-(5) [as detailed in instant specification on pages 10-12]. Yahata further teaches that the aromatic phosphoric acid ester is capable of imparting excellent flame retardancy and dielectric property to a thermoset resin article, and is relatively easy to synthesize (para [0032]).
Furthermore, Yahata teaches that the thermosetting resin may contain a curing agent and alternative additives (para [0068]), wherein additional components may include thermoplastic mains and elastomers (such as polyolefins) (para [0090]). Yahata further teaches the manufacture of a laminate sheet comprised of various materials, including synthetic mains (thermosetting or thermoplastic resins). Among these materials, the thermosetting resin, such as an epoxy resin, exhibit excellent characteristics and are traditionally preferred in the art (para [0002]).
Yahata does not explicitly teach an acid-modified polyolefin.
In the same field of endeavor, Mikami teaches an adhesive composition comprising: a carboxyl group-containing polyolefin resin (A), a carboxyl group-containing styrene resin (B), a carbodiimide resin (C), and an epoxy resin (D) (Table 2, para [0046]). Additionally, Mikami teaches that a flame retardant may be incorporated with the adhesive composition, preferably a phosphorus-based flame retardants such as phosphoric acid esters (para [0058]).
Furthermore, Mikami teaches by containing the carboxyl group-containing polyolefin resin (A), the laminate through the adhesive layer made of the adhesive composition can exhibit several superior properties (para [0045]). Specifically, upon removal of the metal substrate from the laminate, the resulting laminated body achieves: (1) a relative dielectric constant (ε c ) at a frequency of 1 MHz of 3.0 or less, (2) the dielectric loss tangent (tan δ) at a frequency of 1 MHz of 0.02 or less, (3) Peel strength between resin substrate and metal substrate is 0.5 N / mm or more, and (4) a humidity solder heat resistance of 240 ° C or higher (para [0045 and 0011]).
With regard to the acid-modified polyolefin, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant to Mikami’s composition comprising the acid-based olefin. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Yahata’s explicitly discloses improvement to flame retardancy and dielectric properties which Mikami establishes successfully yielding recognized effective properties, including dielectric properties with phosphoric acid esters. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would expect the modification to create an adhesive composition with added benefits.
With regard to claim 2, Yahata teaches that the flame retardant should be contained in the thermosetting resin composition within a range of 1 to 50% parts by mass (para [0086]), which reads on the claimed range limitation due to overlap.
Mikami similarly teaches the flame retardant is most preferable at a range of 10 to 100 parts by mass with respect to 100 parts by mass of the total composition, is most preferable, which overlaps the claimed range. Mikami notes that values below this said range result in poor flame retardance, while exceeding it causes a deterioration in adhesiveness, heat resistance and electrical characteristics (para [0058]).
As stated above, the combination of Yahata and Mikami teaches the claimed polyolefin.
With regard to the phosphorus flame retardant concentration, Yahata teaches a range of 1 to 50% and Mikami teaches 10 to 100 parts by mass to total composition. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. As such, the teaching of Yahata and Mikami., when combined with general knowledge in the art, render the claimed feature obvious.
With regard to claim 3, Yahata does not teach both the acid value and a polyolefin.
In the same field of endeavor, Mikami teaches that the acid value of the carboxyl group-containing polyolefin resin (A) should preferably fall within the range of 100 to 1000 equivalents / 10 6 g (5.61 to 56.11 mg KOH/g). This specified range is critical to ensure optimal heat resistance, favorable compatibility with epoxy and carbodiimide resins, and strong adhesion to resin or metal substrates. Acid values outside this preferred range may result in compromised adhesive strength, diminished crosslinking density, reduced solution stability, or a shortened pot life (para [0016]).
Furthermore, Mikami specifies that carboxyl group-containing styrene resin (B) should maintain an acid value between 10 to 100 equivalents / 10 6 g or more, more preferably 100 (0.56 to 5.61 mg KOH/g). Exceeding this upper limit can lead to poor adhesion and deteriorated low dielectric properties (para [0016]).
Notably Production Example 1, utilizes a maleic anhydride-modified propylene-butene copolymer (acid value 410 equivalents / 10 6 g) (23 mg KOH/g)(para [0092]), successfully reading on the claimed range.
[To clarify calculations (Production Example 1): an equivalent concentration of 410 equivalents per 106 corresponds to 0.41 mEq/g. Multiplying this by 56.11 mg KOH/meq yields an acid value of 23 mg KOH/g. (0.41 meq/g x 56.11 mg KOH/meq = 23 mg KOH/g)]
With regard to the acid value, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant to Mikami’s composition comprising the acid-based olefin at the specified acid value. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, thereby achieving a composition that will exhibit the desirable adhesion, viscosity, and stability within the parameters established in Mikami.
With regard to claim 4, although Yahata does not explicitly designate an epoxy as the curing agent. Yahata notes that the epoxy resin is “particularly preferable because a thermoset article thereof excels in mechanical and electrical properties” (para [0069]). Furthermore, Yahata teaches that when an epoxy is utilized as the thermosetting component, the resin composition is blended with the curing agent (para [0082]).
In the same field of endeavor, Mikami also does not explicitly designate a curing agent by name. However, Mikami teaches the incorporation of carbodiimide resin (C) and/or epoxy resin (D) (para [0046]). According to Mikami, the carbodiimide resin (C) reacts with the carboxyl groups of the polyolefin or styrene resins to improve the interaction and adhesion between adhesive and substrate (para [0051]). Additionally, Mikami teaches that the epoxy resin (D) must be added in an adequate range (para [0053]); if the amount falls below this threshold, insufficient hardening occurs, compromising adhesiveness and heat resistance. Conversely, exceeding the threshold negatively affects the pot life and dielectric properties of the adhesive.
Consequently, both the epoxy resin and carbodiimide resins perform the exact same operational functions and characteristics as a curing agent—specifically by facilitating crosslinking, hardening, and adhesion—they can be properly interpreted as functioning as the curing agent in the context of the claims.
With regard to the carbodiimide resin, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant to Mikami’s composition comprising the carbodiimide resin to achieve the claimed invention. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, to achieve a composition that will exhibit the desirable adhesion and interactions established in Mikami.
With regard to claim 5, Yahata teaches an a phosphorus acid ester having the following structure (para [0061]), which reads on the claimed structural limitation of an aromatic ring:
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With regard to claim 6, Yahata teaches that the aromatic phosphoric acid ester 4 is a glassy solid (para [0137]). A glassy solid is a form of an amorphous solid, this disclosure reads on the claimed physical limitation.
With regard to claim 7, Yahata’s Table 1 teaches an epoxy resin content of 53-57 part by mass (Table 1).
In the same field of endeavor, Mikami teaches that an adhesive composition should contain 1 to 25 parts by mass of carbodiimide resin and 1 to 30 parts by mass of epoxy resin per 100 parts by mass of the combined group containing resins. Mikami explicitly warns that exceeding these ranges degrades pot life and dielectric properties (paras [0052 and 0054]).
In combination these two disclosures read on the curing agent concentration.
With regard to the concentration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. As such, the teaching of Yahata and Mikami, when combined with general knowledge in the art, render the claimed feature obvious.
With regard to claim 8, Yahata does not teach the relative permittivity and dielectric dissipation factor.
In the same field of endeavor, Mikami teaches a relative dielectric constant (i.e., relative permittivity) (ε c )in the entire region of the frequency of 1 MHz to 10 GHz is preferably 3.0 or less (para [0025]) and the dielectric loss tangent (tan δ) (i.e. dielectric dissipation factor), in the entire region of the frequency of 1 MHz to 10 GHz is preferably 0.02 or less (para [0026]), which reads on the claimed relative permittivity and dielectric dissipation factor.
Furthermore, Mikami teaches high adhesiveness to low polar resin base materials such as polyolefin films and metal base materials to satisfy these high solder heat resistance and excellent low dielectric properties.
With regard to the relative permittivity and dielectric factors, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant to Mikami’s composition comprising the acid-based olefin. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, thereby achieving a low dielectric constant and low dielectric loss tangent in high frequency regions as established in Mikami.
With regard to claim 9, Yahata does not teach an adhesive sheet comprising a layer including the adhesive composition.
In the same field of endeavor, Mikami teaches A laminate (Z) formed by bonding a resin base material and a metal base material with an intervening adhesive layer, which contains the claimed adhesive layer (Abstract). Mikami further teaches that this adhesive layer exhibits a low dielectric constant and a low dielectric loss tangent (para [0006]).
Furthermore, Mikami teaches that an adhesive sheet can be obtained by laminating the laminate (Z) to a release substrate using an adhesive composition, or by applying a release substrate onto the adhesive layer’s surface (para [0062]). This disclosure can create a layer.
With regard to the adhesive sheet configuration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant into the configuration taught by Mikami. The cited references collectively teach the same constituent components (i.e., phosphoric acid esters, epoxy resin, thermoplastic resin, and laminates). A person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success in achieving the low dielectric constant and loss tangent established in Mikami.
With regard to claim 10, while Yahata does not teach an electromagnetic wave shield film comprising a layer including the adhesive composition. Yahata teaches that the laminate sheet is suitable for use in various computers, cameras, mobile telephones, liquid crystal displays (LCD), TFT displays, and other electronic devices (para [0002]).
In the same field of endeavor, Mikami teaches the laminate is highly advantageous for flexible printed wiring board applications, particularly applications that require low dielectric properties (i.e., low dielectric constant, low dielectric loss tangent) in a high frequency region, and explicitly notes its suitability used for electromagnetic shielding applications. This reads on electromagnetic wave shielding, the laminate contains a layer of the adhesive composition.
With regard to the electromagnetic wave shield application, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Yahata’s phosphorus flame retardant into the configuration taught by Mikami. The cited references collectively teach the same constituent components and applications (i.e., laminates, electronics). A person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success in achieving the low dielectric constant and loss tangent for shielding electromagnetic waves established in Mikami.
With regard to claim 11, Yahata teaches a laminate sheet is used that is made of various materials, such as a synthetic main (thermosetting resin or thermoplastic main) (para [0002]). The laminate can be prepreg, wherein the prepreg can be prepared by impregnating a base material with the claimed thermosetting composition—either dissolved in a solvent or applied directly— and subsequently drying or coated to form a layer[0096]). This disclosure structurally reads onto the claimed limitation of a laminate comprising a layer of the composition.
As stated above, the combination of Yahata and Mikami teaches the claimed adhesive composition.
With regard to claim 12, Yahata teaches that the invention further can be utilized in a printed wiring board containing a prepreg or the laminate sheet (para [0023]).
As stated above, the combination of Yahata and Mikami teaches the claimed adhesive composition.
Conclusion
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/AJA ARYANNA WALKER/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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