DETAILED ACTION
Claim Rejections - 35 USC § 103
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsutsumi et al. (US 2022/0195096).
Regarding claim 1:
Tsutsumi discloses a heat-curable maleimide resin composition comprising (A) a maleimide resin, (B) an organic compound comprising an allyl group and an isocyanuric ring, and (C) a reaction initiator [abstract; 0011-0017]. The reference further teaches the compound (B) further comprises an epoxy group in an amount of 3-50 parts by mass per 100 parts by mass of the total of compounds (A) and (B) [0112]. Further, an epoxy resin can be used in addition to compound (B) in an amount of 0-30% by mass per a total of compound (A), compound (B), and the epoxy resin [0119-0123]. The reaction initiator (C) comprises catalysts [0114].
The maleimide resin (A) is represented by formula (1), which is reproduced on the following page of this Office Action:
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477
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Tsutsumi teaches B is derived from a dimer diamine, e.g., a diamine resulting from the dimer acid of oleic acid (C36) [0046-0049; 0145; Reaction Formula 1 on p13-14]. The C36 diamine is encompassed by the presently claimed B. Additionally, it is noted Tsutsumi’s formula (1) and present formula (1) both disclose m can be zero (0) (i.e., the residue of B is not necessarily present). Although Tsutsumi is silent with regard to a specific compound that falls within the scope of present formula (1), the prior art formula (1) overlaps in scope with the presently claimed formula. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select from among the imide compounds disclosed by Tsutsumi, including those falling within the scope of the claimed formula (1), to provide a compound in accordance with the prior art, and thereby arrive at the claimed invention.
Additionally, Tsutsumi teaches two or more kinds of maleimide resins can be used [0110]. In Working Examples, Tsutsumi further teaches commercially available bismaleimide compounds sold under the names BMI-3000J (A-3) and BMI-1500 (A-5), which each fall within the scope of present formula (3), can be used in combination with a compound according to formula (1) [0150; 0152; Table 1 on p16]. The relative ratio of the compound according to formula (1) to the bismaleimide compounds is 70:10 and 70:20, respectively, or 87.5:12.5 and 78:22.
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526
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Structure of BMI-3000J by Designer Molecules Inc.
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Structure of BMI-1500 by Designer Molecules Inc.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use compounds corresponding to presently disclosed components (A), (B), (C), and (D), including relative amounts of (A) and (B) that fall within the claimed range, as taught by Tsutsumi for their disclosed purposes to provide a resin composition in accordance with the teachings of the prior art, and thereby arrive at the claimed invention.
As noted above, Tsutsumi teaches two different compounds falling within the scope of the claimed epoxy compound (C), namely Tsutsumi’s compound (B) comprising an epoxy group or an additional epoxy resin. The prior art’s disclosed amounts of these compounds overlap with the presently claimed range. Tsutsumi teaches 3-50 parts by mass of compound (B) per 100 parts by mass of the total of compounds (A) and (B), wherein Tsutsumi’s compound (A) comprises two compounds that correspond to the claimed components (A) and (B). Therefore, the 3-50 parts by mass equates to about 3-100 parts by mass of Tsustumi’s epoxy compound (B) per 100 parts of Tsutsumi’s compound (A) (corresponds to both present components (A) and (B)) (i.e., the ratios are 3/97 and 50/50). Additionally, Tsutsumi teaches 0-30% by mass of the epoxy resin per a total of compound (A), compound (B), and the epoxy resin. This implies components (A) and (B) comprise 70-100% of the same total. Since compound (B) comprises 3-50 parts per 100 parts of the total of compounds (A) and (B), then compound (A) comprises 50-97 parts of the same total. Therefore, in 100 parts by mass of compound (A), compound (B), and the epoxy resin, there are 35-97 parts of compound (A) (35=70*50%) and 0-30 parts of epoxy resin, or about 0-86 parts of epoxy resin per 100 parts of compound (A) (86=30/35*100), wherein Tsutsumi’s compound (A) comprises two compounds that correspond to the claimed components (A) and (B). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of a compound (B) comprising an epoxy group, including over amounts within falling within the presently claimed range, for its disclosed purposes to provide a resin composition in accordance with the teachings of the prior art, and thereby arrive at the claimed invention. Alternatively, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of epoxy resin, including over amounts within falling within the presently claimed range, for its disclosed purposes to provide a resin composition in accordance with the teachings of the prior art, and thereby arrive at the claimed invention.
Regarding claim 2:
Tsutsumi discloses several structural formulas for A falling within the scope of the present claim (e.g., the residue of pyromellitic dianhydride) [0044].
Regarding claim 3:
Tsutsumi discloses a prepreg comprising the composition [0033; 0129; 0138].
Regarding claims 4-5:
Tsutsumi discloses a copper-clad laminate and a printed wiring board [0003-0004; 0137-0138].
Response to Arguments
Applicant's arguments filed 7/16/2026 have been fully considered but they are not persuasive.
Applicant’s amendment to claim 1 overcomes the previous claim objection.
Applicant argues the examiner errs by concluding Tsutsumi’s Synthesis Example 1 is encompassed by present formula (1) (p9-10).
In response, while the examiner agrees present formula (1) does not encompass Tsutsumi’s Synthesis Example 1, the examiner respectfully submits the rejection does not rely on this example to meet the claimed formula (1). The examiner believes the similar language used in both the present claims and the prior art may have led to confusion about the rejection. Although the rejection at paragraph 5 above (previous rejection at paragraph 7 of the Non-Final Rejection mailed 4/16/2026) refers to Tsutsumi’s Working Examples as comprising “a compound according to formula (1)”, this phrase is in reference to Tsutsumi’s formula (1) and not that this compound meets the presently claimed formula (1).
To summarize the rejection, Tsutsumi teaches a composition comprising (A) a maleimide resin according to a formula (1) that overlaps in scope with the present formula (1). The examiner concludes it would have been obvious to select from among the compounds according to Tsutsumi’s formula (1), including those falling within the scope of present formula (1) (above paragraph 4). This compound would correspond to present component (A). The rejection further notes Tsutsumi teaches the use of two or more maleimide resins and further points to the Working Examples, which use a combination of a compound according to Tsutsumi’s formula (1) (not according to present formula (1)) and bismaleimide compounds that fall within the scope of present formula (3) (above paragraph 5). These compounds correspond to present component (B). The examiner therefore concluded it would have been obvious to select the combination of the first obvious compound (present component (A)) and the additional compounds exemplified in the examples (present component (B)) and thereby arrive at the claimed invention.
Applicant argues Tsutsumi’s compound (B) comprises an allyl group and an isocyanuric ring which provides a different copolymerization mechanism from the presently claimed invention (p10-11). Applicant further argues an artisan would not be motivated to employ an epoxy compound because the reference teaches different preferred compounds (B) for achieving desirable dielectric properties (p11).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a particular “copolymerization mechanism”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 only requires the presence of “(C) an epoxy compound”. Tsutsumi at paragraph [0112] teaches “As the component (B), there are, for example, those having an epoxy group […]” which provides a compound that meets the claimed requirements of component (C). The present claim does not exclude the compound from having additional features such as an allyl group or isocyanuric group. Furthermore, while Tsutsumi provides specific examples without an epoxy group, such as triallyl isocyanurate and diallylmethyl isocyanurate, the reference nevertheless teaches embodiments wherein the compound (B) comprises an epoxy group. Therefore, one of ordinary skill in the art would be motivated to use such a compound to provide a compound in accordance with the reference’s teaching.
Applicant argues Tsutsumi’s compound (B) is an essential component and so “The additional epoxy resin cannot serve as the sole component copolymerizing with the cyclic imide compounds (A) and (B) [as defined by the present claims]” (p11). Applicant argues the reference is therefore silent with regard to the claimed amount of epoxy compound (C) (p11).
The examiner respectfully disagrees. First, the examiner again notes the claim only requires presence of “(C) an epoxy compound”. There is no requirement that the compound is the sole copolymerizing component nor is there any limitation that excludes the presence of Tsutsumi’s compound (B). Additionally, as explained in the current rejection, Tsutsumi teaches 0-30% by mass of the epoxy resin per a total of compound (A), compound (B), and the epoxy resin. After calculations using other disclosed ratios, this implicitly discloses about 0-86 parts of epoxy resin per 100 parts of compound (A), wherein Tsutsumi’s compound (A) comprises two compounds that correspond to the claimed components (A) and (B) as explained above.
Applicant further argues the claimed amounts of components (A), (B), and (C) results in a desirable combination of electrical properties, adhesion, chemical resistance, and durability (p11). Applicant points to Working Examples 1-12 and Comparative Examples 4-7 in the present specification to demonstrate these results (p7-8).
The examiner has reviewed the results but does not find them persuasive of nonobviousness because the data is not commensurate in scope with the claimed invention. Present claim 1 requires a component (A) according to formula (1), a component (B) according to formula (3), and a component (C) comprising any epoxy compound, wherein component (A) is 60-90 parts, component (B) is 10-40 parts, and component (C) is 0.1-20 parts by mass, all relative to 100 parts of a total of components (A) and (B). The data, however, only provides two specific compounds (A-1) and (B-1) across the full range of weight amounts, and two additional examples of each component ((A-2), (A-3), (B-2), and (B-3)) at particular points within the range, and amounts of two specific compounds (C-1) and (C-2) at a narrow range. Given the scope of the compounds according to formulas (1) and (3) and the broad recitation of “an epoxy compound”, one of ordinary skill in the art would not be able to extrapolate the submitted results across the claimed genus of compositions. Therefore, the examiner maintains the rejections of record.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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