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 .
The amendment filed 2/13/2026 has been entered. Claims 1-18 are pending in the application. 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 § 103
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki (JP2000/212254A, please refer to the machine translation for the below cited sections), for the reasons recited in the prior office action and restated below, wherein the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Aoki particularly given that the instant claims do not require any particular amount(s) of components (A) and/or (B) in the thermosetting resin composition nor exclude the incorporation of other resin components, and more particularly given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed invention as currently recited in the instant claims.
As discussed in the prior office action, Aoki teaches a thermosetting resin composition, a prepreg formed from the resin composition, and cured products and reinforced composite materials produced therefrom (Paragraphs 0001-0005 and 0009-0016), wherein the resin composition comprises an epoxy resin (A), a curing agent (B), and at least one compound (C) having in its molecule at least one partial structure A selected from formulae (1) to (4) as shown in Paragraph 0010-0013, and having one functional group capable of reacting with an epoxy resin or its curing agent (Entire document, particularly Abstract, Paragraphs 0001-0005 and 0009-0016). Aoki teaches that examples of the compound (C) include a compound having a partial structure B represented by formula (5) including maleimide derivatives further having maleimide and alkyl or aryl groups as substituents (Paragraphs 0094-0098), thereby teaching and/or suggesting a maleimide compound having one or more maleimide groups as in the instantly claimed compound (B-1) of instant claim 1. Aoki also teaches that the compound (C) having a partial structure B as shown in formula (5) can be one represented by formula (12), which is a (meth)acrylamide with R44 and R45 substituents connected to the nitrogen group (e.g. Y-N(R44)(R45) wherein Y may be a (meth)acrylamide group given that R41, R42, and R43 in formula (12) may each be hydrogen or an alkyl group), and wherein each R44 and R45 may be an aryl group and the aryl group may have a substituent selected from an alkyl group, an aryl group, a halogen atom, and an alkoxy group (Paragraphs 0095-0098), with non-limiting examples of general formula (12) including various (meth)acrylamide compounds as recited in Paragraph 0101 such as N,N-dibenzylacrylamide, thereby reading upon and/or suggesting a compound of formula (I) as instantly claimed (especially in light of the fact that n1, n2, m1 and m2 as instantly claimed may each be zero); and given that Aoki clearly teaches that one or a plurality of the recited compounds may be utilized for component (C) (Paragraph 0106), Aoki clearly teaches a thermosetting resin composition comprising (A) at least one compound of formula (I) and (B) at least one (B-1) maleimide compound having one or more maleimide groups as in instant claim 1. Hence, given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select from any of the suitable compounds taught by Aoki, or any combination(s) thereof, the Examiner maintains her position that the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Aoki given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 2, although Aoki does not specifically recite that the thermosetting resin composition comprises a “radical polymerization initiator” given that Aoki does teach compounds that may comprise halogen substituents, including compounds with halogen-nitrogen bonds that are capable of functioning as radical initiators, the Examiner takes the position that the claimed composition as broadly recited in instant claim 2 would have been obvious over the teachings of Aoki (Entire document, particularly Paragraphs 0055, 0063, 0085, 0093, and 0098).
With respect to instant claims 3 and 11, it is again noted that Aoki clearly teaches (meth)acrylamide compounds including those having aryl groups attached to the nitrogen atom, and given again that Aoki clearly teaches that the aryl groups may have alkyl or alkoxy substituents as discussed in detail above, the Examiner takes the position that absent any clear showing of critically and/or unexpected results with respect to the C1-C20 chain length or the C3-C6 cyclic chain length, the claimed invention as recited in instant claims 3 and 11 would have been obvious over the teachings of Aoki.
With respect to instant claims 4 and 12, Aoki clearly teaches that the resin composition can be heat-cured to produced cured products thereof (Paragraph 0114), and hence, the claimed invention as recited in instant claims 4 and 12 would have been obvious over the teachings of Aoki.
With respect to instant claims 5 and 13, the Examiner takes the position that the claims are directed to the intended end use of the resin composition and given that the claims do not provide any additional material or structural limitations to differentiate the claimed thermosetting resin composition of instant claims 5 and 13 from the thermosetting resin composition taught by Aoki, particularly given that the resin composition taught by Aoki is capable of the same intended end use, the claimed invention as recited in instant claims 5 and 13 would have been obvious over the teachings of Aoki.
With respect to instant claims 6 and 14, Aoki teaches that the composition may further comprise organic solvents thereby reading upon the claimed “resin varnish” and hence the claimed invention as recited in instant claims 6 and 14 would have been obvious over the teachings of Aoki (Paragraph 0108).
With respect to instant claims 7 and 15, it is again noted that Aoki clearly teaches that the resin composition can be impregnated into reinforcing fibers such as a reinforcing fiber bundle or fiber preform thereby reading upon the claimed “prepreg comprising a substrate impregnated with the thermosetting resin composition” as recited in instant claims 7 and 15 (Entire document, particularly Paragraphs 0008, 0014-0015, 0031, 0116-0123, 0129, and 0134-0135). Hence, the claimed invention as recited in instant claims 7 and 15 would have been obvious over the teachings of Aoki.
With respect to instant claims 8 and 16, given that the claimed invention does not require any particular “support film” for the “adhesive film having a resin composition layer comprising the thermosetting resin composition” and that Aoki clearly teaches that multiple layers of the prepreg may be laminated together as is the examples (Examples, particularly Paragraphs 0123-0124), the Examiner takes the position that the claimed invention as recited in instant claims 8 and 16 would have been obvious over the teachings of Aoki.
With respect to instant claims 9-10 and 17-18, although Aoki does not specifically recite a laminate of the thermosetting resin composition or prepreg with a “metal foil”, Aoki does teach an example wherein metallic joints are laminated on both ends of a carbon fiber reinforced composite material produced from the thermosetting resin composition (Examples, particularly Paragraph 0126), and given that Aoki clearly teaches that fiber reinforced composite materials are suitable for use in sports, aerospace, and general industrial applications including various civil engineering and construction materials, such as for primary aircraft structural materials like main wings and tails, or structural materials for automobiles, ships, railway vehicles, and wind turbine blades, wherein such end uses typical combine the fiber reinforced composite with metal foils to provide desired mechanical and/or physical properties, the Examiner takes the position that the claimed metal foil laminates of instant claims 9-10 and 17-18 would have been obvious over the teachings of Aoki given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results (Paragraphs 0001 and 0140).
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamate (WO2023/286714A1, published 1/19/2023 with a different inventive entity and earlier effective filing date, please refer to US2024/0309138A1 as an English language translation of the WO document for the below cited sections) in view of Murase (JP2017/125174A, please refer to the machine translation for the below cited sections), for the reasons recited in the prior office action and restated below, wherein the Examiner maintains her position that the claimed invention would have been obvious over the combined teachings of Yamate in view of Murase, particularly given that the instant claims do not require any particular amount(s) of components (A) and/or (B) in the thermosetting resin composition nor exclude the incorporation of other resin components, and more particularly given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed invention as currently recited in the instant claims.
As discussed in the prior office action, Yamate teaches a thermosetting (meth)acrylamide resin composition comprising a (meth)acrylamide polymer having repeating units derived from a polymerizable compound of formula (I), as shown below, and a repeating unit derived from a polymerizable compound of formula (II), as shown below, each of which may read upon the instantly claimed compound (I) of instant claim 1 as well as the instantly claimed compound (II) of instant claim 3, and one or more thermosetting resins selected from the same list of (B) components (B-1) to (B-5) as recited in instant claim 1 (Entire document, particularly Paragraphs 0014-0018 and 0023-0029) such that the only difference between the thermosetting resin composition taught by Yamate and the instantly claimed resin composition of instant claims 1 and 3 is that the composition taught by Yamate provides the polymerizable compound(s) in pre-polymerized form while the instant claims provide the polymerizable compounds, or precursors of the polymer of Yamate, as such (e.g. non-polymerized form) in the thermosetting resin.
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However, it is well established in the art that polymerizable compounds may be provided in similar thermosetting resins in the form of unreacted “monomers” and/or in the form of oligomers and/or polymers as evidenced by Murase which teaches a similar thermosetting resin composition for forming a prepreg that is capable of providing a cured product that satisfies dielectric properties in a high frequency region suitable for a printed wiring board while having excellent heat resistance and heat stability, wherein the composition comprises a) a modified polyphenylene ether resin having terminal unsaturated groups, b) a cyclic olefin polymer, and c) a compatibilizer comprising a polar group such as an olefin-(meth)acrylamide copolymer or an elastomer modified with a (meth)acrylamide monomer, although the compatibilizer is not limited to polymer compounds typified by the above mentioned modified polyolefins and modified elastomers, but may also be low molecular weight polymerizable compounds having no repeating units such as various polymerizable (meth)acrylamide compounds as disclosed by Murase (Entire document, particularly Paragraphs 0001, 0007-0010, and 0082-0096). Hence, the Examiner maintains her position that it would have been obvious to one having ordinary skill in the art to provide the thermosetting resin composition of Yamate with the polymerizable compounds of formula (I) and/or formula (II) in non-polymerized form as is typical in the art as evidenced by Murase, such that instant claims 1 and 3 would have been obvious over the teachings of Yamate in view of Murase given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 2 and 11, Murase teaches that the thermosetting resin may further comprise a radical polymerization initiator (Paragraphs 0099-0105), and given that Yamate also teaches the use of radical polymerization initiators for polymerizing the polymerizable compounds (Paragraphs 0127-0128), instant claim 2 and well as instant claim 11 would have been obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 4 and 12, Yamate teaches a cured product formed from the thermosetting resin composition (Paragraph 0030), thereby rendering instant claims 4 and 12 obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 5 and 13, Yamate teaches that the thermosetting resin composition may be utilized for an insulator of a printed wiring board (Paragraph 0031), thereby rendering instant claims 5 and 13 obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 6 and 14, Yamate teaches a resin varnish comprising the thermosetting resin composition (Paragraph 0032), thereby rendering instant claims 6 and 14 obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 7 and 15, Yamate teaches a prepreg comprising a base material impregnated with the thermosetting resin composition (Paragraph 0033), thereby rendering instant claims 7 and 15 obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 8 and 16, Yamate teaches an adhesive film having a resin composition layer comprising the thermosetting resin composition on a support film (Paragraph 0034), thereby rendering instant claims 8 and 16 obvious over the teachings of Yamate in view of Murase.
With respect to instant claims 9-10 and 17-18, Yamate teaches metal foil laminates comprising a metal foil and a layer of the thermosetting resin composition as in instant claims 9 and 17, or a layer of the cured thermosetting resin composition as in instant claims 10 and 18 (Paragraphs 0033-0038, 0288, 0302, and 0306-0308), thereby rendering instant claims 9-10 and 17-18 obvious over the teachings of Yamate in view of Murase.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
It is also noted that the applied reference has a common co-inventor with the instant application and based upon the earlier effectively filed date of the reference, the reference also constitutes prior art under 35 U.S.C. 102(a)(2). Hence, if an English language translation of the foreign priority document is submitted to overcome the applied reference as a 102(a)(1) reference, then the above rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Double Patenting
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/576470 in view of Murase for generally the reasons recited in the prior office action and restated below with respect to the amended claims in both the present application and the copending claims, wherein as requested by the Applicant, this provisional rejection is being held in abeyance.
Amended copending claim 8 is directed to a thermosetting resin composition comprising a polymer comprising a repeating unit derived from a polymerizable compound of formula (I’), as shown below, and a repeating unit derived from a polymerizable compound of formula (II’), as shown below, each of which may still read upon the instantly claimed compound (I) of instant claim 1 as well as the instantly claimed compound (II) of instant claim 3, and a thermosetting resin that is at least one or more selected from the same list of (B) components (B-1) to (B-5) as recited in instant claim 1 such that the only difference between the resin composition of copending claim 8 and instant claims 1 and 3, is that the composition of copending claim 8 provides the polymerizable compound(s) in pre-polymerized form while the instant claims provide the polymerizable compounds, or precursors of the polymer of copending claim 8, as such (e.g. non-polymerized form) in the thermosetting resin.
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However, it is well established in the art that polymerizable compounds may be provided in similar thermosetting resins in the form of unreacted “monomers” and/or in the form of oligomers and/or polymers as evidenced by Murase which teaches a similar thermosetting resin composition for forming a prepreg that is capable of providing a cured product that satisfies dielectric properties in a high frequency region suitable for a printed wiring board while having excellent heat resistance and heat stability, wherein the composition comprises a) a modified polyphenylene ether resin having terminal unsaturated groups, b) a cyclic olefin polymer, and c) a compatibilizer comprising a polar group such as an olefin-(meth)acrylamide copolymer or an elastomer modified with a (meth)acrylamide monomer, although the compatibilizer is not limited to polymer compounds typified by the above mentioned modified polyolefins and modified elastomers, but may also be low molecular weight polymerizable compounds having no repeating units such as various polymerizable (meth)acrylamide compounds as disclosed by Murase (Entire document, particularly Paragraphs 0001, 0007-0010, and 0082-0096). Hence, the Examiner maintains her position that it would have been obvious to one having ordinary skill in the art to provide the thermosetting resin composition of copending claim 8 with the polymerizable compounds of formula (I’) and/or formula (II’) in non-polymerized form, such that instant claims 1 and 3 would have been obvious over copending claim 8 in view of Murase. Further, given that Murase clearly teaches that such thermosetting resin compositions may further comprise a radical polymerization initiator as in instant claims 2 and 11 to produce a cured product (Paragraphs 0099-0105) as in instant claims 4 and 12, may be utilized as a resin composition for an insulating layer of a printed wiring board (Paragraph 0117) as in instant claims 5 and 13, may be provided as a resin varnish (Paragraphs 0097-0098) as in instant claims 6 and 14, may be impregnated into a substrate to form a prepreg (Paragraph 0120) as in instant claims 7 and 15 or coated on a support film to form a dry film as in the examples (Paragraphs 0118 and 0145) as in instant claims 8 and 16, and may then be utilized to produce a metal-clad laminate with metal foils (Paragraph 0123) as in instant claims 9-10 and 17-18, the Examiner maintains her position that instant claims 2-18 would have been further obvious over copending claim 8 in view of Murase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over amended claim 8 of copending Application No. 18/577,516 in view of Murase for generally the reasons recited in the prior office action and restated below with respect to the amended claims in both the present application and the copending claims, wherein as requested by the Applicant, this provisional rejection is being held in abeyance.
Amended copending claim 8 is directed to a thermosetting resin composition comprising a polymer comprising at least one repeating unit derived from a polymerizable compound of formula (I’), as shown below, which still reads upon the instantly claimed compound (I) of instant claim 1 as well as the instantly claimed compound (II) of instant claim 3, and a thermosetting resin that is at least one or more selected from the same list of (B) components (B-1) to (B-5) as recited in instant claim 1 such that the only difference between the resin composition of copending claim 8 and instant claims 1 and 3, is that the composition of copending claim 8 provides the polymerizable compound(s) in pre-polymerized form while the instant claims provide the polymerizable compounds, or precursors of the polymer of copending claim 8, as such (non-polymerized form) in the thermosetting resin.
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However, it is again noted that it is well established in the art that polymerizable compounds may be provided in similar thermosetting resins in the form of unreacted “monomers” and/or in the form of oligomers and/or polymers as evidenced by Murase which teaches a similar thermosetting resin composition for forming a prepreg that is capable of providing a cured product that satisfies dielectric properties in a high frequency region suitable for a printed wiring board while having excellent heat resistance and heat stability, wherein the composition comprises a) a modified polyphenylene ether resin having terminal unsaturated groups, b) a cyclic olefin polymer, and c) a compatibilizer comprising a polar group such as an olefin-(meth)acrylamide copolymer or an elastomer modified with a (meth)acrylamide monomer, although the compatibilizer is not limited to polymer compounds typified by the above mentioned modified polyolefins and modified elastomers, but may also be low molecular weight polymerizable compounds having no repeating units such as various polymerizable (meth)acrylamide compounds as disclosed by Murase (Entire document, particularly Paragraphs 0001, 0007-0010, and 0082-0096). Hence, the Examiner maintains her position that it would have been obvious to one having ordinary skill in the art to provide the thermosetting resin composition of copending claim 8 with the polymerizable compounds of formula (I’) in non-polymerized form, such that instant claims 1 and 3 would have been obvious over copending claim 8 in view of Murase. Further, given that Murase clearly teaches that such thermosetting resin compositions may further comprise a radical polymerization initiator as in instant claims 2 and 11 to produce a cured product (Paragraphs 0099-0105) as in instant claim 4 and 12, may be utilized as a resin composition for an insulating layer of a printed wiring board (Paragraph 0117) as in instant claims 5 and 13, may be provided as a resin varnish (Paragraphs 0097-0098) as in instant claims 6 and 14, may be impregnated into a substrate to form a prepreg (Paragraph 0120) as in instant claims 7 and 15 or coated on a support film to form a dry film as in the examples (Paragraphs 0118 and 0145) as in instant claims 8 and 16, and may then be utilized to produce a metal-clad laminate with metal foils (Paragraph 0123) as in instant claims 9-10 and 17-18, the Examiner maintains her position that instant claims 2-18 would have been further obvious over copending claim 8 in view of Murase.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive with respect to the obviousness rejection over Aoki or over Yamate in view of Murase, nor the double patenting rejections over copending applications 18/576470 and 18/577516 as restated above. With respect to the prior art rejections, the Applicant argues that “the applied references [allegedly] do not teach or suggest the claimed thermosetting resin composition”, and that additionally, the “properties of the cured product of the claimed composition [allegedly] would have been unexpected over the applied references” (see page 7 of the response). In terms of the obviousness rejection over Aoki, the Applicant argues that “a benzyl acrylamide is only exemplified as an example, and, therefore, benzyl acrylamide is not used as a main ingredient of the epoxy resin composition,” arguing further that “benzyl acrylamide is not actually used in the examples of Aoki” and that “using a benzyl acrylamide, etc. with any one of (B-1)‒(B-5) is [allegedly] neither described nor suggested in Aoki” (see page 9, lines 1-8. However, the Examiner respectfully disagrees and first notes that a prior art reference is not limited to its working examples and must be considered in its entirely in assessing the patentability of claims. Hence, the fact that Aoki does not specifically use a benzyl acrylamide in the working examples does not negate the fact that Aoki clearly teaches that a benzyl acrylamide, particularly N,N-dibenzylacrylamide as specifically recited by Aoki, may be utilized as a component (C) in combination with any of the other suitable component (C) compounds, including maleimide compounds/derivatives reading upon the claimed (B-1) of instant claim 1, in the thermosetting resin composition. The Examiner also notes that the claimed invention does not require any particular “main ingredient” amount(s) of said (A) and/or (B) compound(s) and does not exclude the incorporation of other resin components in the thermosetting resin composition given the “comprising” transitional language with respect to the claimed invention.
In terms of the properties of the cured product of the claimed composition, the Applicant argues that “as shown in the Examples of the present application, the claimed thermosetting resin composition, which includes (A) at least one compound of formula (I), and (B) at least one of (B-1) to (B-5), can be cured to form a cured product that has a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and exhibits excellent water resistance,” wherein “[t]hese effects are [allegedly] unexpected over Aoki, which [allegedly] neither describes nor suggests a composition including both (A) at least one compound of formula (I), and (B) at least one of (B-1) to (B-5), much less that a cured product of such a composition can exhibit the above properties,” thus arguing that the “thermosetting resin composition recited by claim 1 [allegedly] would not have been obvious over Aoki” (see page 9, lines 8-17). However, the Examiner again notes that, contrary to Applicant’s arguments, Aoki does teach and/or suggest a thermosetting resin composition including both (A) at least one compound of formula (I) and at least one (B-1) maleimide compound having one or more maleimide groups as in instant claim 1, and given that the claims do not require any particular amount of said (A) and/or (B) nor require the cured composition to exhibit any particular properties, such as any particular glass transition temperature (Tg) or any particular dielectric constant (Dk) or any particular dielectric loss tangent (Df), etc., Applicant’s arguments with respect to the cured product having “a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and exhibits excellent water resistance” in general are not persuasive. As to Applicant’s examples allegedly providing evidence of “unexpected” effects over Aoki, Applicant’s showing and arguments are not persuasive to overcome the obviousness rejection based upon Aoki because: 1) the data and results relied upon by the Applicant are not commensurate in scope with the claimed invention; 2) the showing does not represent a comparison of the claimed invention to the teachings of Aoki in order to support a clear showing of unexpected results over Aoki; 3) the data and results do not support the Applicant’s arguments that the claimed composition as recited in instant claim 1 provides a cured product having said “high glass transition point”, “low dielectric constant” and “low dielectric loss tangent”, and exhibits said “excellent water resistance” in general; and 4) the data and results appear to follow clear, known trends in the art and hence do not represent a clear showing of “unexpected” results. More specifically, in terms of reason 1), the Examiner notes that all of the inventive examples only utilize (A) compounds that have an acrylamide group with an acryloyl group as the polymerizable functional group Y (see table below of the three types of (A) compounds utilized in the examples) while the claimed invention more broadly recites that “Y represents a polymerizable functional group” with no other limitations with respect to the broadly claimed “polymerizable functional group”, such that one skilled in the art could not reasonably extend the probative value of Applicant’s showing to all polymerizable functional groups as more broadly recited in instant claim 1, or even to the range of compounds encompassed by formula (II) of instant claims 3 and 11 based upon the limited number of acrylamide compounds utilized in the examples.
Compound (A) from Examples
Chemical Structure
N,N-bis(4-(tert-butyl)phenyl)acrylamide (DtBPAm)
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N,N-bis (4-(1,1,3,3-tetramethylbutyl)phenyl)acrylamide (DODPAm)
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N,N-[4,4'-bis(α,α-dimethylbenzyl)diphenyl]acrylamide (DBnDPAm)
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It is also noted that at least for the claimed (B-1) and (B-2) compounds, the examples utilize a very specific maleimide compound for (B-1), i.e., MIR-3000 which is a biphenylaralkyl-type maleimide that by itself is known to provide different properties over other maleimide compounds as evidenced by Tanigawa (US2018/0002485A1, Examples, particularly Paragraph 0173 and Tables 1-4), and two different vinyl-terminated polyphenylene ether (PPE) compounds that specifically have polymerizable terminal groups for (B-2), i.e., SA9000 which as noted by the Applicant is a methacrylic-modified PPE that the Examiner notes comprises methacrylate terminal groups and OPE-2St which the Examiner notes has vinyl terminal groups, and that by themselves are known to provide improved and/or substantially different properties over other non-vinyl-terminated polyphenylene ether compounds as evidenced by, for example, Wang (US2015/0044485A1, Examples) or Umehara (US2023/0399511A1, Paragraphs 0023-0060, Examples); and no examples utilizing a combination of any of the exemplified (B-1) to (B-5) compounds (e.g., encompassed by the claimed “(B) at least one of the following (B-1) to (B-5)”), such that the Examiner again takes the position that one skilled in the art could not reasonably extend the probative value to the more broadly claimed invention comprising “at least one” of the recited (B-1) to (B-5) compounds and/or to any maleimide compound having one or more maleimide groups and/or to any polyphenylene ether compound as instantly claimed. It is further noted that with the exception of Examples 33-35 and Comparative Example 9, which are based upon OPE-2St as (B-2), all of the examples utilize a peroxide initiator, although not recited in instant claim 1, wherein one skilled in the art would clearly recognize that not only does the type of initiator affect the cured product but also the amount thereof as clearly evident from Applicant’s own examples (e.g., see Comparative Examples 1 and 8 – the only difference of which is the amount of PERBUTYL P utilized yet results in a substantial difference in properties, particularly Tg, Df, and water resistance). Further, with respect to reason 3) above, it is noted that various inventive examples actually appear to have relatively low Tg values and/or relatively high Df values and/or inferior water resistance properties in comparison to several of the comparative examples (e.g., see the Tg values of inventive Examples 12-15, 18-29, and 38, all of which are below 150°C and thus would not be considered “high” in the art; or inventive Examples 30-31 which have higher Df values than most of the comparative examples; or inventive Examples 36-37 which have some of the highest values for the change in Df after water absorption treatment); while several of the “Comparative” examples actually appear to have comparable Tg, Df, and water resistance properties to those of several of the inventive examples (e.g., see Comparative Example 4 in comparison to inventive Examples 1-3). Hence, even though the instant claims do not specifically require any particular properties, e.g., Tg, Dk, Df, etc., the data and results do not appear to support the Applicant’s argument that the cured product of the claimed composition containing the combination of (A) and at least one (B-1) to (B-5) (necessarily) has “a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and exhibits excellent water resistance” as argued by the Applicant.
Thus, in the absence of any clear showing of criticality and/or unexpected results with respect to the claimed invention as currently recited, and that the instant claims do not require any particular amount(s) of components (A) and/or (B), do not exclude the incorporation of other resin components, and do not require any particular properties of the cured product, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Aoki as discussed in detail above.
With respect to the obviousness rejection over Yamate in view of Murase, the Applicant argues that Yamate teaches a polymer that includes the compound of formula (I) and that “the polymer of Yamate differs from the compound in the claimed composition because the polymer of Yamate also includes the compound of formula (II)”, arguing that “the present claims do not recite a polymer comprising the compound of formula (I)” and that “[e]ven though a polymer will be formed, the present claims recite a thermosetting resin composition comprising the compound of formula (I), but not the compound of formula (II)” (see pages 10-11 of the response). However, the Examiner notes that both the compound of formula (I) and the compound of formula (II) of Yamate read upon the instantly claimed “(A) at least one compound of formula (I)”, and that the rejection clearly acknowledged the difference between the teachings of Yamate utilizing a polymer of said compounds versus the instant claims utilizing the precursor or non-polymerized compound(s). The Applicant also argues that “Yamate teaches that, in the compound of formula (I), X1 and X2 is limited to a C7-C20 alkyl or alkoxy,” while [o]n the other hand, claim 1 recites that X1 and X2 in the compound of formula (I) can be a C1-C20 alkyl or alkoxy,” arguing that the claimed compound includes not only C7-C20 but also C1-C6 alkyl or alkoxy, and thus, “the compound of formula (I), as recited by claim 1, [allegedly] also differs from the compound of formula (I) of Yamate for this reason” (see page 11 of the response). However, the Examiner respectfully disagrees and notes that although the instant claims recite a broader alkyl/alkoxy range than taught by Yamate, e.g., a broader genus encompassing the species of Yamate, the range or groups taught by Yamate clearly fall within the range or groups of the claimed X1 and X2 of the claimed formula (I). The Applicant then argues that “Murase does not cure the above deficiencies of Yamate with respect to claim 1,” arguing that “in Murase, a compound of formula (I) is not used in the composition” and that “[f]urthermore, in the claimed thermosetting resin composition, the compound of formula (I) is used with (B-1)‒(B-5)” such that “when the composition is cured, the compound of formula (I) will not be polymerized solely, but will form a network structure with the (B) ingredient” and as a result, “the cured product [allegedly] exhibits the properties of high glass transition point, a low dielectric constant and a low dielectric loss tangents, and excellent water resistance” – effects that allegedly “would have been unexpected over the teachings of Yamate and Murase” (see pages 11-12 of the response). The Applicant further argues that “contrary to the claimed composition, Yamate teaches a polymer comprising compounds of formula (I) and formula (II), and as a result, the cured product of Yamate exhibits a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and high solubility in organic solvents and high compatibility with thermosetting resins,” arguing that ‘[i]n the examples of Yamate, although a composition comprising the polymer and a polyphenylene ether compound is used, the polymer comprising the compound of formula (I) and the compound of formula (II) is used in the composition, but the compound of formula (I) is not used as it is,” while “[o]n the other hand, in the present claims, by using the compound of formula (I) as it is (in combination with the (B) ingredient), the properties of a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and excellent water resistance are exhibited” (see page 12 of the response), although the Examiner notes that the Applicant acknowledges that Yamate also teaches a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and further notes that Yamate additionally teaches that the resin composition has low water absorption, e.g., “excellent water resistance” (Paragraph 0309, Examples). The Applicant argues that “[s]uch phenomenon is [allegedly] neither described nor suggested in Yamate” and thus “the claimed thermosetting resin composition [allegedly] would not have been obvious over Yamate,” however, the Examiner respectfully disagrees given that Yamate clearly teaches properties as argued by the Applicant as corresponding to said “phenomenon” and specifically provides working examples that have similar properties as those of Applicant’s “Inventive” Examples (see Examples and Tables 1-4 of Yamate). The Applicant then appears to continue to argue the teachings of Murase separately and not as presented in the obviousness rejection, arguing that Murase teaches using a polyphenylene ether and a cyclic olefin (co)polymer that does not include a repeating unit derived from the compound of formula (I), such that Murase allegedly does not provide any new information given that Yamate teaches using a polyphenylene ether too, and thus “even if Murase was combined with Yamate, such a combination [allegedly] would not have rendered obvious the claimed thermosetting resin composition” (see page 13) of the response. However, the Examiner respectfully disagrees and first notes that in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As clearly evident from the obviousness rejection, Murase was relied upon by the Examiner to support her position that it is well established in the art that polymerizable compounds may be provided in thermosetting resins in the form of oligomers and/or polymers as in Yamate and/or in the form of unreacted “monomers” (e.g., polymer precursors) as in the instantly claimed invention, and given that both compound (I) and compound (II) of Yamate may read upon the instantly claimed “(A) at least one compound of formula (I)” of instant claim 1 wherein absent any evidence to the contrary, the Examiner maintains her position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide such compounds or precursors in place of and/or in addition to a polymer thereof in the invention taught by Yamate, and that the Applicant fails to provide any clear showing of criticality and/or unexpected results with respect to the claimed composition over the teachings of Yamate in view of Murase, particularly in light of the discussion above with respect to deficiencies in Applicant’s showing of alleged “unexpected” results, Applicant’s arguments over Yamate in view of Murase are not persuasive.
With respect to the obviousness-type double patenting rejections, as requested by the Applicant, the provisional rejections are being held in abeyance.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 2/13/2026.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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