DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-15 are pending as amended on 12/18/2025. Claims 12-15 stand withdrawn from consideration.
Claims 9-11 and 15 were amended in the response filed on 12/18/2025, however, the amendment does not contain the text of any deleted matter or markings to indicate the changes that have been made relative to the immediate prior version of the claims. Markings must be shown in any subsequent amendment, as set forth in 37 CFR 1.121.
No new rejections have been made below. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 112
Claim 10 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites types of fillers, and the claim also recites embodiments of each type of filler using parentheses. The claim is considered indefinite because there is a question or doubt as to whether the embodiments recited within the parentheses are (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim Rejections - 35 USC § 103
Claim(s) 1-6 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kashima et al (US 2018/0186933) in view of van Swieten et al (US 5198515) for the reasons previously set forth in the action mailed on 9/23/2025.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kashima et al (US 2018/0186933) in view of van Swieten et al (US 5198515), and further in view of Koh et al (Catalytic Effect of 2,2’-Diallyl Bisphenol A on Thermal Curing of Cyanate Esters, Journal of Applied Polymer Science, Vol. 101, 1775–1786 (2006)) for the reasons previously set forth in the action mailed on 9/23/2025.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered.
Applicant argues (p 19) that the rejections under 35 USC 112 have been overcome by amendment. With the exception of one remaining issue (embodiments recited within parentheses) for which claim 10 stands rejected, Applicant’s argument is persuasive.
On p 20, Applicant provides the statement required to invoke the 35 USC 102(b)(2)(C) exception based on common ownership, thereby disqualifying “La Delfa” as prior art. Previously set forth rejections relying on La Delfa have been withdrawn.
As to the rejection over Kashima in view of Van Swieten:
Applicant argues (p 21) that primary reference Kashima is concerned with an entirely different field than the present application. To the extent that this statement may be considered an argument against the rejection citing Kashima as a primary reference, Applicant’s argument is unpersuasive for at least the reason that Applicant has not explained what differences exist between the field taught by Kashima and the field of the present application, and how such differences would preclude citing Kashima as a primary reference.
Applicant further argues (p 21) that primary reference Kashima is entirely silent toward various improvements obtained by the present invention. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, Applicant’s arguments regarding improved properties allegedly associated with the presently recited compositions (see arguments on p 21 as well as allegations of unexpected results on page 23) are not supported by any evidence of unexpected results or criticality associated with the presently claimed subject matter. See MPEP 716.02 for guidance regarding overcoming a rejection by showing unexpected results, including the requirement as set forth in 716.02(e) that Applicant must compare the claimed subject matter with the closest prior art, and, the requirement in 716.02(d) that unexpected results must be commensurate in scope with the claimed invention.
Applicant further argues (pp 21-22) that secondary reference Van Swieten is directed to improving fracture toughness of bismaleimides with the incorporation of diallyl benzenes, and therefore one would not look to Van Swieten to modify Kashim (because Kashim discloses improving other types of properties). This argument fails to establish nonobviousness for at least the reason that the section of Van Swieten cited by Applicant is within a background discussion of how bismaleimides have previously been used and/or improved, and is not a characterization/summary of Van Swieten’s overall disclosure.
Applicant argues (p 22) that Van Swieten discloses combining biscitraconimide with a specific group of olefinically unsaturated materials. The olefinically unsaturated compound (A) in Kashima is not among the list of olefinically unsaturated materials named by Van Swieten. Applicant argues (p 23) that one would not expect the alleged benefits taught by Van Swieten unless also including one of the olefinically unsaturated materials disclosed by Van Swieten.
As set forth in paragraph 26 of the previous action, Van Swieten discloses disadvantages associated with using bismaleimide in bisimide resins systems, and teaches improvements in bisimide resin systems which can be obtained by substituting bismaleimide for biscitraconimide in a curable composition which also contains an olefinically unsaturated material. Applicant is correct that the list of useful olefinically unsaturated materials named by Van Swieten does not include Kashima’s compound (A).
However, Van Swieten’s list of suitable materials includes a wide variety of types of olefinically unsaturated compounds, including both aromatic (styrene, etc…) along with non-aromatic (B-pinene) compounds, as well as hydrocarbon compounds (styrene, divinyl benzene, indene, etc…) along with compounds which contain heteroatoms (triallyl cyanurate, triallyl isocyanurate, dibenzalacetone). Additionally, as set forth in the rejection of record, key benefits disclosed by Van Swieten (ease of processing, handling) are attributed to the large melt cure window of biscitraconimides which allows them to be cocurable with a large group of materials, and the low viscosity of biscitraconimide melt (col 5, lines 53-62). Considering Van Swieten’s disclosure of advantages which are attributed to the biscitraconimide material itself, and further considering the breadth of compounds taught by Van Swieten as a suitable olefinically unsaturated material, one having ordinary skill in the art would have had a reasonable expectation of success in obtaining Van Swieten’s advantages associated with swapping bismaleimide for biscitraconimide in compositions comprising olefinically unsaturated materials other than those specifically named by Van Swieten (including, e.g., Kashima’s olefinically unsaturated compound DABA-CN). Therefore, Applicant’s argument that one would not have expected the benefits of Van Swieten when combined with Kashima without including an olefinically unsaturated material named by Van Swieten are not found persuasive.
Applicant argues (p 23) that combining a material from Van Swieten’s list into the composition of Kashima would destroy the purpose of Kashima (because of Kashima’s specific end use in semiconductor packages). However, Applicant’s argument is unpersuasive for at least the reason that the rejection is based on the obviousness of swapping bismaleimide for biscitraconimide within Kashima’s composition, and not on the obviousness of incorporating other features of Van Swieten (such as the olefinically unsaturated material) into Kashima. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
THIS ACTION IS MADE FINAL. 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766