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 .
DETAILED ACTION
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.
Claims 19-33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 recites that the total units of the three monomers (aromatic vinyl, aromatic polyene, and olefin) is 100 mass% in lines 19-20, whereas claim 20, line 3, recites the further comprising of a polar monomer. The 100 mass% limitation in claim 19 is confusing, given that claim 20 recites the presence of a fourth monomer.
Claim 19 recites the limitation "the aromatic vinyl compound monomer" in line 8. There is insufficient antecedent basis for this limitation in the claim. It is suggested that this line reads in part: “the aromatic vinyl compound is an aromatic vinyl monomer having…”
Claim 21 recites that the composition excludes non-polar monomer in lines 1-2, while at least the ethylene monomer, if not all three monomers, in the composition described in claim 19 are non-polar. Examiner notes that the specification of the current invention discloses that it is most preferable that no polar monomers are contained in the composition (paragraph 0024).
Claims 25 and 33 do not specify a frequency at which the dielectric tangent is to be measured.
Claim Rejections - 35 USC § 103
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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 19-20, 22-25, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al. (JP 2009/161743 A, published 23 Jul. 2009, hereinafter Arai).
Regarding claims 19-20, 22-24, and 29, Arai teaches a post curing resin composition comprising a specific copolymer with nonpolar vinyl compounds (Abstract). Arai teaches P-5 copolymer comprising ethylene, 13 mol.% styrene, and 0.7 mol.% divinyl benzene (paragraphs 0049-0050 and Table 2, see original Japanese patent document, reproduced below).
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Note: The third column in the table is the mol.% of styrene, the fourth column is the mol.% of non-ethylene olefins, and the fifth column is the mol.% of divinyl benzene. The remaining monomer in the P-5 copolymer is ethylene.
Arai’s P-5 copolymer comprises 13 mol.% styrene, 0.7 mol.% divinyl benzene, 86.3 (100-13-0.7) mol.% ethylene, and no other olefins, and the Mw and polydispersity of P-5 copolymer are 33,700 and 2.1, respectively (Table 2 above). Thus, the number average molecular weight of P-5 copolymer is about 16,050 (33,700/2.1). The amount of styrene in his P-5 copolymer is about 35 wt. ((104*13)/(28*86.3%+104*13%+130*0.7%)). The number of divinyl benzene repeat units in a length of the P-5 copolymer equal to the number average molecular weight is 2.9 (0.7%*16,050)/(28*86.3%+104*13%+130*0.7%)).
Further, Arai teaches that the polyene content in his copolymer may vary from 0.05 to 10 mol.% (claim 1). Therefore, combining this range for the amount of aromatic polyene with the amount used in Arai’s teaching example P-5, Arai teaches the number of pieces of divinylbenzene in his copolymer ranges from about 0.2 (2.9*0.05/0.7) to about 41 (2.9*10/0.7) pieces of divinylbenzene (aromatic polyene).
Arai teaches the inclusion of 1 to 100 parts of polyphenylene ether-based resin (additive resin) to 100 parts of the post-curable resin composition (paragraph 0032).
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a relative amount of polyphenylene ether from the overlapping portion of the ranges taught by Arai because overlapping ranges have been held to be prima facie obviousness.
Arai teaches the inclusion of some polyenes with polar groups (paragraph 0008), curing agent (paragraph 0030), and inorganic fillers (paragraph 0032).
Arai teaches a solvent is added to the resin composition (paragraph 0034).
Arai teaches his cured composition can be used as an interposer for high-frequency integrated circuits by applying the composition followed by drying (removing the solvent) and curing by heating, thereby forming a post-cured body with low dielectric constant and low dielectric loss (paragraph 0034). Arai also teaches applying a solution of the composition to a non-woven fabric, drying, and curing, and this product is then laminating and pressing to a conductor foil (paragraph 0034).
Regarding claims 25 and 30, Arai teaches the elements of claims 24 and 29, Arai teaches the cured articles of his composition have tensile modulus values ranging from 30 MPa to 3 GPa (paragraph 033). Arai does not report the temperature under which these measurements were conducted. Therefore, it is the examiner’s position that these tests were conducted at room temperature, so the reported values would overlap with values obtained at 23°C.
Arai teaches his cured articles of his composition have tensile storage modulus values of 2.2 to 96.3 MPa at 200°C (Table 4, machine translation included below from original Japanese patent document). Arai does not report values measured at 300°C; however, given the large modulus values at 200°C and the similarity in the compositions taught by Arai and those of claim 19, it is the examiner’s position that the tensile storage modulus values of Arai at 300°C would overlap with the claimed values.
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Arai teaches the cured articles of his compositions have dielectric constants and loss values ranging from 0.36 to 2.7 and 0.001-0.003, respectively at 1 GHz (Table 5, machine translation included below from original Japanese patent document). Arai does not disclose the values of these properties at 10 GHz; however, as shown in Table 5, the values of these two properties are not sensitive to frequency at these high frequencies; therefore, it is the examiner’s position that, given the values taught by Arai at 1 GHz and the similarity in the compositions taught by Arai and those of claim 19, it is the examiner’s position that the dielectric constant and loss values of Arai’s cured articles would overlap with the claimed values.
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In light of the overlap between the claimed composition in a varnish form and that disclosed by Arai, it would have been obvious to one of ordinary skill in the art to use a composition in varnish form that is both disclosed by Arai and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al. (JP 2009/161743 A, published 23 Jul. 2009, hereinafter Arai) in view of Zeng et al (US Patent Application 2021/0070980 A1, priority 04 Aug. 2017, published 11 Mar. 2021, hereinafter Zeng).
Regarding claims 26-28, Arai teaches the elements of claim 23, and Arai teaches applying a solution of the composition to a non-woven fabric, drying, and curing, and this product is then laminating and pressing to a conductor foil (metal foil) (paragraph 0034), including curing to a B-state (partially cured) (paragraph 0034).
Arai does not specifically disclose heating and pressurizing the B-state impregnated non-woven and a metal foil.
Zeng teaches a vacuum lamination molding process in which an impregnated prepreg is laminated to a copper foil by stacking impregnated prepregs with copper foils and heating the stack while applying pressure (paragraphs 0087-0089).
Given that Arai and Zeng are drawn to curable composition impregnated non-woven-metal foil laminates for high frequency integrated circuits, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to vacuum lamination process as taught by Zeng as the process for laminating the impregnated prepreg and metal foil as taught by Arai. Since Arai and Zeng are both drawn to curable composition impregnated non-woven-metal foil laminates, one of ordinary skill in the art would have a reasonable expectation of success in using the vacuum lamination process as taught by Zeng as the process for laminating the impregnated prepreg and metal foil as taught by Arai. Further, Zeng teaches his lamination process provides a high frequency circuit board (paragraph 0086), and his process is suitable for processing high-multi-layer printed circuit boards (paragraph 0090).
Arai in view of Zeng does not disclose the composition-metal peel strength of his laminate; however, given that the cured product of Arai in view of Zeng has the same copolymer with the same relative amounts of the same three monomers, the same amount of polyphenylene ether, and the inclusion of curing agent, polar monomer, and inorganic fillers, and the lamination process is the same as the claimed lamination process, the impregnated non-woven-metal foil laminate of Arai in view of Zeng would inherently have the same peel strength as the claimed invention, and therefore, would fall within the claimed range for peel strength.
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al. (JP 2009/161743 A, published 23 Jul. 2009, hereinafter Arai) in view of Takemoro (CN 1397426 A, published 19 Feb. 2003, hereinafter Takemoro).
Regarding claims 31-33, Arai teaches the elements of claim 19, and Arai teaches curable composition in a solvent (Abstract and paragraph 0034), and his cured composition is used as an interposer for high-frequency integrated circuits (paragraph 0034). Arai teaches a curing temperature of 50 to 150°C (paragraph 0030).
Arai does not disclose explicitly applying his varnish on a metal foil and curing the composition.
Takemoro teaches the coating of a metal foil to obtain a resin-coated metal foil using a varnish that is soluble, in order to obtain good coatability (paragraph 0092). Takemoro teaches the varnish is coated onto a metal foil (especially a copper foil) using a coating machine and dried (cured) at 80-200°C to obtain a resin-coated metal foil (paragraph 0093).
Given that Arai and Takemoro are drawn to curable composition and conductive foils for integrated circuits, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the coating and curing process taught by Takemoro as the process for producing resin-coated conductive foils comprising the curable composition as taught by Arai. Since Arai and Takemoro are both drawn to curable composition and conductive foils for integrated circuits, one of ordinary skill in the art would have a reasonable expectation of success in using the process for producing resin-coated conductive foils as the process for producing resin-coated conductive foils comprising the curable composition as taught by Arai. Further, Takemoro teaches his resin-coated metal foils can be stacked, heated, and pressed together in order to form a multilayer printed circuit board (paragraph 0036).
Arai in view of Takemoro does not disclose the cured composition-metal peel strength of his laminate; however, given that the cured product of Arai in view of Takemoro has the same copolymer with the same relative amounts of the same three monomers, the same amount of polyphenylene ether, and the inclusion of curing agent, polar monomer, and inorganic fillers, and the laminate is formed by the same method as claimed, the composition-metal foil peel strength of the laminate of Arai in view of Takemoro would inherently have the same peel strength as the claimed invention, and therefore, would fall within the claimed range for peel strength.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-20, 22, and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-8, and 11 of copending Application No. 18/799,459. Although some of the claims at issue are not identical, they are not patentably distinct from each other because of overlapping ranges. As shown in Table 1, the claims and their interdependencies are identical or not patently distinct to corresponding claims in co-pending Application 18/799,459.
Specifically, the ranges of the amounts of the three monomers in the copolymers of the two applications differ somewhat, but there are wide portions of overlap for the relative amounts of the three monomers. 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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Table 1: Listing of corresponding claims for double patenting rejections
Application 18/807,116
Co-Pending Application 18/799,459
19. A composition in a varnish form, the composition comprising: an olefin-aromatic vinyl compound-aromatic polyene copolymer satisfying the following conditions (1) to (4); and a solvent:
(1) a number average molecular weight of the copolymer is 5000 or more and 100000 or less;
(2) the aromatic vinyl compound monomer is an aromatic vinyl compound having 8 or more and 20 or less carbon atoms, and a content of a unit of the aromatic vinyl compound monomer is 10 mass% or more and less than 60 mass%;
(3) the aromatic polyene is one or more selected from polyenes having 5 or more and 20 or less carbon atoms, having a plurality of vinyl groups and/or vinylene groups in the molecule, and a content of the vinyl groups and/or vinylene groups derived from a unit of the aromatic polyene is 3.5 pieces or more and less than 20 pieces per number average molecular weight; and
(4) the olefin is one or more selected from olefins having 2 or more and 20 or less carbon atoms, being ethylene alone, or having a mass ratio of a-olefin monomer components other than ethylene to an ethylene monomer component contained in the olefin, of 1/10 or less, and the total of units of the olefin monomer, the aromatic vinyl compound monomer, and the aromatic polyene monomer is 100 mass%.
1. A curable composition, comprising:
an olefin-aromatic vinyl compound-aromatic polyene copolymer satisfying the following conditions (1) to (4); and
an additive resin,
wherein the additive resin is a polyphenylene ether, and wherein the polyphenylene ether has a plurality of functional groups per one molecule and a number average molecular weight in a range of 1000 to 5000, and
wherein a cured product of the curable composition has a storage elastic modulus at 300[Symbol font/0xB0]C of 1[Symbol font/0xB4]106 Pa or more, and a dielectric constant of 2.5 or less and 2.0 or more and a dielectric tangent of 0.003 or less and 0.0005 or more at 23[Symbol font/0xB0]C and 10 GHz:
(1) a number average molecular weight of the copolymer is 5000 or more and 100000 or less;
(2) the aromatic vinyl compound monomer is an aromatic vinyl compound having 8 or more and 20 or less carbon atoms, and a content of the aromatic vinyl compound monomer unit is 0 mass% or more and 70 mass% or less;
(3) the aromatic polyene is one or more selected from polyenes having 5 or more and 20 or less carbon atoms and having a plurality of vinyl groups and/or vinylene groups in the molecule, and a content of the vinyl groups and/or the vinylene groups derived from a unit of the aromatic polyene is 1.5 pieces or more and less than 20 pieces per number average molecular weight; and
(4) the olefin is one or more selected from olefins having 2 or more and 20 or less carbon atoms, and a total of units of the olefin monomer, the aromatic vinyl compound, and the aromatic polyene monomer is 100 mass%.
6. A curable composition in varnish form, comprising: the curable composition according to claim 1; and a solvent.
20. The composition according to claim 19, further comprising one or more selected from the group consisting of additive resin, curing agent, polar monomer, filler, flame retardant, and surf ace modifier.
7. The curable composition according to claim 1, further comprising a curing agent.
8.The curable composition according to claim 1, further comprising one or more selected from the group consisting of a filler, a flame retardant, and a surface modifier
22. The composition according to claim 20, wherein the composition contains 1 to 500 parts by mass of one or more additive resins selected from the group consisting of a hydrocarbon-based elastomer, a polyphenylene ether-based resin, and an aromatic polyene-based resin in total relative to 100 parts by mass of the copolymer.
2. The curable composition according to claim 1, wherein the additive resin is contained in an amount of 1 to 500 parts by mass relative to 100 parts by mass of the copolymer.
29. A cured product of the composition in a varnish form
according to claim 19.
6. A curable composition in varnish form, comprising: the curable composition according to claim 1; and a solvent.
11. A cured product of the curable composition according to claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Arai et al. (JP 2006/176708 A, published 06 Jul. 2006) teaches a copolymer of a cross-polymerizing olefin, an aromatic vinyl compound, and a diene and blend of this copolymer with another resin. Arai (JP 2010/280771 A, published 16 Dec. 2010) teaches a post-curable resin comprising an ethylene-olefin-polyene copolymer, in which the “olefin” is styrene. Arai et al. (US Patent 6,559,234 B1, published 06 May 2003) teaches a cross-copolymerized olefin-styrene-diene copolymer. Arai et al. (US Patent Application 2017/0145135 A1, published 25 May 2017) teaches an olefin-aromatic vinyl compound-aromatic polyene copolymer. Guan et al. (US Patent Application 2020/0157261 A1, priority 04 Aug. 2017, published 21 May 2020, hereinafter Guan) teaches a thermosetting resin composition comprising a solvent-soluble polyfunctional vinyl aromatic copolymer for copper foil clad laminates (Abstract). Kawabe et al. (US Patent Application 2007/0129502 A1, published 07 Jun. 2007) teaches a curable resin comprising polyphenylene ether with a number average molecular weight of 700 to 4,000 and a solvent-soluble polyfunctional vinylaromatic copolymer. Suzuki et al. (JP 2002/265543 A, published 18 Sep. 2002) teaches a film for heat sealing comprising an olefin-aromatic vinyl compound-diene copolymer and laminating this copolymer with copper foils. Suzuki et al. (JP 2010/013575 A, published 21 Jan. 2010) teaches a blend of an olefin-aromatic vinyl compound-divinylbenzene copolymer and polyphenylene ether.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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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.
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/JOHN VINCENT LAWLER/Examiner, Art Unit 1787
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