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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/27/2026 has been entered.
The amendment filed 7/27/2026 has been entered. Claims 3 and 11 have been canceled. Claims 1-2, 4-10, and 12-18 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 1-2, 4-10, and 12-18 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). As discussed in prior office actions, 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, both of which read upon the instantly claimed compound of formula (II), and one or more thermosetting resins selected from the same list of (B) components (B-1) to (B-5) as recited in amended claim 1 including a maleimide compound (B-2) having a structure as shown in Paragraph 0183 reading upon the instantly claimed (B-1) maleimide compound having a structure as recited in the claimed formula (V), as well as a polyphenylene ether (PPE) compound (B-3) (Paragraph 0195) having a terminal modified with a substituent having a carbon-carbon unsaturated double bond as recited in Paragraphs 0203-0204 reading upon the instantly claimed (B-2), with (B-4) to (B-6) reading upon the claimed (B-3) to (B-5), respectively (Entire document, particularly Paragraphs 0014-0018, 0023-0029, 0183, and 0203-0204). Yamate teaches that with respect to the composition ratios of the (meth)acrylamide polymer as component (A) and the one or more thermosetting resins as component (B), particularly (B-2) to (B-6) reading upon the instantly claims (B-1) to (B-5), the content of the (A) component in the resin composition is not particularly limited, but 1 to 99% by weight, 10 to 70% by weight, 10 to 50% by weight relative to the combined amount the component (B) and the crosslinking agent may be exemplified (Paragraph 0268); with the content ratio of the (B) component and the crosslinking agent in the resin composition also being not particularly limited but 99:1 to 1:99 is exemplified (Paragraph 0269).
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Yamate also teaches that with respect to the (meth)acrylamide polymer, the polymer may be one consisting of at least one of each of the repeating units (I) and (II) as well as at least one repeating unit derived from another radically polymerizable compound (Paragraphs 0093), wherein “the total of the repeating unit derived from the polymerizable compound of formula (I) and the repeating unit derived from the polymerizable compound of formula (II) is preferably 30% by weight or more in the polymer…more preferably 40% by weight or more, further preferably 50% by weight or more, particularly preferably 80% by weight or more” (Paragraph 0119). Yamate teaches that other radically polymerizable compounds “may be selected as appropriate depending on the desired physical properties such as melting point, viscosity, or refractive index” and “[a]lthough not particularly limited, thereof include (meth)acrylic compounds, (meth)acrylonitrile, styrenic compounds, a vinyl-based compound, an olefin compound, an unsaturated carboxylic acid anhydride, and one or more of these may be used” (Paragraph 0106). Yamate teaches that as the styrenic compounds, those recited in Paragraph 0116 including styrene, p-t-butoxycarbonyl-styrene (a bifunctional compound) “or the like may be exemplified” (Paragraph 0116); while other examples of suitable radically polymerizable compounds include a vinyl compound such as acrolein (a bifunctional compound) and divinylbenzene (a difunctional compound with two vinyl groups that is a known crosslinking agent as evidenced by Paragraph 0260 of Yamate), and olefin compounds such as butadiene (a compound with two vinyl groups) “or the like” (Paragraph 0117).
Yamate similarly teaches that the resin composition comprising the (meth)acrylamide polymer may further include a vinyl-based resin as thermosetting resin component (B-8) with examples thereof including styrene and vinyl compounds having two or more vinyl groups in a molecule such as divinylbenzene (noted above as a suitable vinyl compound for incorporation into the polymer), “a modified polyphenylene ether resin containing vinyl groups at both ends, polybutadiene in which the total amount of 1 and 2 bonds is 50% or more relative to the total amount of all carbon-carbon double bonds, and a styrene-butadiene copolymer having polybutadiene in which the total amount of 1 and 2 bonds is 50% or more relative to the total amount of all carbon-carbon double bonds” (Paragraph 0257). In addition, Yamate more generally teaches that the resin composition may also include a monomer having a vinyl group or a (meth)acryloyl group (Paragraph 0134), and/or a (meth)acrylate resin as component (B-7) that may be a monofunctional (meth)acrylate monomer or a polyfunctional (meth)acrylate monomer (Paragraph 0248); and also teaches that when the resin composition includes at least one selected from (B-2) to (B-8), the resin composition may include a polymerization initiator such as a peroxide-based polymerization initiator like benzoyl peroxide which is also recited as a suitable radical polymerization initiator for producing the (meth)acrylamide polymer (Paragraphs 0130, 0262-263 and 0265). Hence, with respect to the claimed invention, Yamate teaches:
Polymerizable Composition
Curable Resin Composition
Polymerizable compound of formula (I)
A. Polymer of formula (I) and formula (II)
Polymerizable compound of formula (II)
B. A curable resin such as an ionizing radiation curable resin and a thermosetting resin, e.g., a monomer having a vinyl group or a (meth)acryloyl group, and/or at least one:
Other radically polymerizable compound(s) such as a styrenic compound, a vinyl-based compound such as divinyl benzene, and/or an olefin compound such as butadiene “or the like”
(B-2) A maleimide compound, e.g. (VII)
(B-3) A PPE compound with terminal C=C
(B-7) A (meth)acrylate monomer
(B-8) A vinyl compound such as styrene and
compounds having 2+ vinyl groups such as:
i. divinylbenzene,
ii. a modified PPE with vinyl end groups,
iii. a polybutadiene with 50%+ 1,2 bonds
iv. a styrene-butadiene with 50%+ 1,2 bonds
A radical polymerization initiator such as benzoyl peroxide
A radical polymerization initiator such as benzoyl peroxide
Units of (I) and (II) being preferably 30% by weight or more of the polymer (and thus other polymerized units constitute 70% or less)
Content of (A) is 1 to 99% by weight relative to combined (B) and crosslinking agent with ratio of (B):crosslinking agent = 99:1 to 1:99.
In terms of the polymerizable composition, Yamate provides a clear teaching and/or suggestion that the mass ratio of compounds (I) and (II) (reading upon the instantly claimed (A) at least one compound of formula (II) as recited in instant claim 1) to other polymerizable compound(s) is 30:70 or more, 40:60 or more, 50:50 or more, and particularly preferably 80:20 or more, reading upon and/or rendering obvious the claimed 99:1 to 1:99 if the other polymerizable compound(s) was/were equated to the claimed component (B), such that the only difference between the teachings of Yamate with respect to the polymerizable composition and the claimed invention as recited in instant claims 1-2 is that Yamate does not specifically teach that the “Other Radically Polymerizable Compounds” is one of (B-1) a maleimide compound having a structure as recited in formula (V), (B-2) a PPE compound whose terminal is modified with a carbon-carbon unsaturated double bond, (B-3) polybutadiene having a molar ratio of 1,2-bond structure to 1,4-bond structure of 80:20 to 100:0, (B-4) a styrene-butadiene-styrene block copolymer (SBS) having a molar ratio of 1,2-bond structure to 1,4-bond structure in the butadiene block of 80:20 to 100:0; and (B-5) a polymer having a repeat unit of formula (III) as recited in instant claim 1. However, given that Yamate clearly teaches that examples of the other radically polymerizable compounds include a styrenic compound, a vinyl-based compound such as divinyl benzene, and/or an olefin compound such as butadiene “or the like”; and also clearly teaches that curable vinyl compounds to be incorporated into the resin composition as (B-8) include a modified PPE resin containing vinyl groups at both ends, a polybutadiene with the total amount 1,2, bonds being 50% or more relative to the total amount of carbon-carbon double bonds, and a styrene-butadiene copolymer having polybutadiene in which the total amount of 1,2 bonds is 50% or more relative to the total of all carbon-carbon double bonds as well as divinyl benzene, thereby clearly teaching and/or suggesting the functional equivalence thereof, the Examiner takes the position that the claimed invention as recited in instant claims 1-2 would have been obvious over the teachings of Yamate with respect to the polymerizable composition given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any of the functionally-equivalent vinyl compounds taught by Yamate as suitable for the resin composition, similar to divinyl benzene, as the other radically polymerizable compound(s) in the polymerizable composition, similar to divinyl benzene, “selected as appropriate depending on the desired physical properties such as melting point, viscosity, or refractive index” as taught by Yamate, particularly given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Alternatively, in comparing the resin composition taught by Yamate to the claimed thermosetting resin composition as recited in instant claims 1-2, the Examiner again notes, as discussed in detail in prior office actions, that the curable resin composition of Yamate differs from the claimed invention in that Yamate provides the claimed polymerizable compound(s) of (A) in pre-polymerized form as the (meth)acrylamide polymer that may then be blended with (B) one or more curable or thermosetting resin(s) reading upon the claimed (B-1) to (B-5) in a content ratio that reads upon and/or renders obvious the claimed 99:1 to 1:99 based upon the above content of (A) taught by Yamate with respect to (B) and the crosslinking agent, and the ratio of (B) to the crosslinking agent as noted above; and although the Examiner is again of the position that it would have been obvious to one having ordinary skill in the art before the effective filing date to utilize the polymerizable compounds (I) and (II) as taught by Yamate in monomeric or non-polymerized form in the resin composition with any one or more of the (B) components taught by Yamate, the Examiner additionally notes that given that Yamate clearly teaches that the resin composition may also include a monomer having a vinyl group or a monomer having a (meth)acryloyl group as a curable resin to be further incorporated into the resin composition with the (meth)acrylamide polymer containing repeating units derived from the polymerizable compound of formula (I) and the polymerizable compound of formula (II), along with a thermosetting resin(s) of (B-2) to (B-6) reading upon the instantly claimed (B-1) to (B-5), respectively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize either or both of the diphenyl (meth)acrylamide monomers of formula (I) and/or (II) as taught by Yamate, reading upon the claimed (A) at least one compound of formula (II), as the curable (meth)acryloyl monomer for incorporation into the curable resin composition along with the (meth)acrylamide polymer and one or more thermosetting resin of (B2)-(B6) as taught by Yamate, especially given that the working examples taught by Yamate provide a clear teaching and/or suggestion that based upon the recited yield amounts, the polymerized (meth)acrylamide polymer solution or resulting reaction solution may include a small amount of unreacted monomers that upon powderization may still be present in the powdered reaction product that is then mixed in the examples with a thermosetting resin such as SA9000 – a modified PPE resin whose terminal is modified with a substituent having a carbon-carbon unsaturated double bond. Further, given that the broad mass ratio of (A):(B) of 99:1 to 1:99 as recited in instant claim 1 and that Yamate does not specifically limit the content of curable (meth)acryloyl monomers, e.g., as the claimed (A), that may be incorporated into the curable resin composition with respect to the other (B) components, reading upon the claimed component (B), the Examiner takes the position that the claimed range would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-2 would have been (further) obvious over the curable resin composition taught and/or suggested by Yamate as discussed above.
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.
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.
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.
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.
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.
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.
Claims 1-2, 4-10, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamate, as applied above to claims 1-2, 4-10, and 12-18, and in further view of Murase (JP2017/125174A, please refer to the machine translation for the below cited sections). The teachings of Yamate are discussed in detail above (and incorporated herein by reference), wherein it is further noted that in addition to the discussion above with respect to the polymerizable composition and/or the curable resin composition, 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, based upon the above additional discussion with respect to Yamate, the Examiner again takes the 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 absent any clear showing of criticality and/or unexpected results, instant claims 1-2, 4-10, and 12-18 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 (e.g., unreacted monomers for pre-polymerized monomers) to obtain predictable results.
Double Patenting
Claims 1-2, 4-10, and 12-18 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 application, 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’) and a repeating unit derived from a polymerizable compound of formula (II’), each of which may still read upon the instantly claimed compound (II) of instant claim 1, and a thermosetting resin that is at least one or more selected from essentially the same list of (B) components (B-1) to (B-5) as recited in instant claim 1, with the thermosetting resins of copending claim 8 including at least the same resins as recited in (B-3), (B-4) and (B-5), such that the only differences between the resin composition of copending claim 8 and amended claim 1 are that the composition of copending claim 8 provides the polymerizable compound(s) in pre-polymerized form while instant claim 1 provides the polymerizable compounds, or precursors of the polymer of copending claim 8, as such (e.g. non-polymerized form) in the thermosetting resin, and that copending claim 8 does not specifically recite a mass ratio of (A) to (B) of 99:1 to 1:99 as instantly claimed. However, the Examiner again notes 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). Further, given the broad mass ratio range of 99:1 to 1:99 of instant claim 1 and that Murase teaches a content of the compatibilizer (C) of 0.1 parts y mass or more and 10 parts by mass or less, more preferably 1 parts by mass or more and 5 parts by mass or less, and particularly preferably 2 parts by mass or more and 5 parts by mass or less, relative to 100 parts by mass of the polyphenylene ether (A) in the composition (Paragraph 0096), thereby overlapping the claimed mass ratio range, the Examiner takes the position that the broadly claimed mass ratio range would have been obvious to one having ordinary skill in the art. 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 claim 1 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 such as a peroxide initiator like dicumyl peroxide or t-butylcumyl peroxide as in instant claim 2 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, 4-10, and 12-18 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 1-2, 4-10, and 12-18 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 application, 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’) which still reads upon the instantly claimed compound (II) of amended claim 1, and a thermosetting resin that is at least one or more selected from essentially the same list of (B) components (B-1) to (B-5) as recited in instant claim 1, with the thermosetting resins of copending claim 8 including at least the same resins as recited in (B-3), (B-4) and (B-5), such that the only differences between the resin composition of copending claim 8 and amended claim 1, are 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, and that copending claim 8 does not specifically recite a mass ratio of (A) to (B) of 99:1 to 1:99 as instantly claimed. 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). Further, given the broad mass ratio range of 99:1 to 1:99 of instant claim 1 and that Murase teaches a content of the compatibilizer (C) of 0.1 parts y mass or more and 10 parts by mass or less, more preferably 1 parts by mass or more and 5 parts by mass or less, and particularly preferably 2 parts by mass or more and 5 parts by mass or less, relative to 100 parts by mass of the polyphenylene ether (A) in the composition (Paragraph 0096), thereby overlapping the claimed mass ratio range, the Examiner takes the position that the broadly claimed mass ratio range would have been obvious to one having ordinary skill in the art. 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 amended claim 1 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 claim 2 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, 4-10, and 12-18 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 7/27/2026 have been fully considered but are not persuasive and/or moot in view of the new grounds of rejection with additional remarks above with respect to the teachings of Yamate, and the modified obviousness-type double patenting rejections as discussed above with respect to the amended claims in the present application and the copending applications.
More specifically, with respect to the obviousness rejection over Yamate in view of Murase, the Applicant argues that Yamate teaches a copolymer comprising a repeating unit derived from a polymerizable compound of formula (I) and a repeating unit derived from a polymerizable compound of formula (II), while “[o]n the other hand, the claimed composition includes a monomer corresponding to formula (I) and/or a monomer corresponding to formula (II),” arguing that the “present claims do not include a copolymer comprising formula (I) and formula (II)” and that “[a]lso, in the present claims, the composition further comprises component B” wherein “Components (B-1) to (B-5) in component B necessarily have a reactive double-bond” so that “by mixing component A with component B of claim 1, the reactive double-bond of component B will react with component A in the presence or in the absence of a polymerization initiator” (see Section B on pages 9-10). The Applicant argues that “[e]ven though both a monomer corresponding to formula (I) and a monomer corresponding to formula (II) are used, a copolymer comprising formula (I) and formula (II) will not always be formed” but “[r]ather, a network polymer derived from a monomer corresponding to formula (I), a monomer corresponding to formula (II) and component B having a reactive double-bond will be formed,” noting again that “the present claims do not use a copolymer comprising formula (I) and formula (II), but instead use a monomer corresponding to formula (I) and/or a monomer corresponding to formula (II)” (see page 10). The Applicant further argues that “the inventors surprisingly found that similar properties to those disclosed in Yamate can be obtained by using the monomer with component B” and that “the claimed thermosetting resin composition can be cured to form a cured product that exhibits a high glass transition point, a low dielectric constant and a low dielectric loss tangent, and exhibits excellent water resistance,” referring to the working examples and Tables 1-12 of the present application (see paragraph bridging pages 10-11). The Applicant then argues that “Yamate similarly discloses that the copolymer has a low dielectric constant, a low dielectric loss tangent, a high glass transition point, and exhibits high solubility in organic solvents and high compatibility with thermosetting resin” but that it “would have been [allegedly] unexpected that the claimed composition, which combines a monomer with component B, could achieve similar effects as that taught by Yamate for an altogether different composition including a copolymer,” and that “[c]onsequently, the claimed composition [allegedly] would not have been obvious over Yamate.
However, the Examiner respectfully disagrees and first notes that Yamate is not limited to a copolymer of just the first monomer of formula (I) and the second monomer of formula (II) as the Applicant appears to argue, and in fact, more broadly teaches that the invention is directed to a “polymer” derived from said polymerizable compounds of formula (I) and formula (II), with Paragraph 0093 clearly reciting that the “polymer” of the invention may be “a polymer consisting of at least one repeating unit derived from a polymerizable compound of the following formula (I) and at least one repeating unit derived from a polymerizable compound of formula (II), or a polymer consisting of at least one of each of the repeating units and at least one repeating unit derived from another radically polymerizable compound” (emphasis added); and given that Yamate clearly teaches and/or suggests that the other radically polymerizable compound to be added to the polymerizable composition with the first and second monomers may be a vinyl compound having a reactive double-bond and/or that monomers having a (meth)acryloyl group may be incorporated into the curable resin composition with a component B, Applicant’s arguments with respect to a “network polymer” versus a “copolymer” are not persuasive. In terms of Applicant’s arguments with respect to “surprisingly” finding that similar properties to those disclosed by Yamate can be obtained by the instantly claimed invention when utilizing a monomer with component B, the Examiner does not find these arguments persuasive given again that Yamate clearly teaches and/or suggests the same combination of components as instantly claimed and more specifically teaches properties as argued by the Applicant, such that contrary to Applicant’s arguments, such results would have been expected by one skilled in the art based upon the teachings of Yamate.
With respect to the secondary reference to Murase, which the Examiner notes is not relied upon above in the first obviousness rejection presented above over the teachings of Yamate taken alone, the Applicant argues that Murase does not cure the (alleged) deficiencies of Yamate, wherein “[a]s explained in the previous response, Murase teaches a polyphenylene ether (B-2)” but “Murase requires a cyclic olefin (co)polymer” (page 11, first two full paragraphs). The Applicant argues that “[e]ven though the properties of he composition taught by Murase are similar to those of the claimed composition, using a monomer of formula (II) of claim 1 instead of a cyclic olefin (co)polymer is neither described nor suggested in Murase,” arguing further that “the claimed composition [allegedly] would not have been obtained by combining the teachings of Yamate and Murase because Yamate teaches an altogether different copolymer comprising a repeating unit derived from formula (I) and formula (II), but Yamate [allegedly] does not teach or suggest using a monomer of formula (I) and formula (II)” and that “[t]herefore, the claimed composition [allegedly] would not have been predictably obtained by combining the teachings of Yamate and Murase” (see last full paragraph of page 11 through the paragraph bridging pages 11-12). However, the Examiner respectfully disagrees and first notes that the claimed invention does not exclude a cyclic olefin (co)polymer as required by Murase, nor does the rejection suggest using a monomer of formula (II) of instant claim 1 instead of the cyclic olefin (co)polymer in the invention taught by Murase, particularly given that the rejection utilizes Murase as a secondary reference that was only relied upon by the Examiner to support her position that utilizing polymerizable monomer(s) or unreacted monomer(s) is known in the art to be functionally equivalent to utilizing a polymer or prepolymer polymerized from said monomer(s) in a thermosetting resin composition. Hence, Applicant’s arguments do not appear to address the Examiner’s position and given that the Applicant fails to provide any clear showing of criticality and/or unexpected results, Applicant’s arguments are not persuasive, and the Examiner maintains her position that the claimed invention as amended would have been obvious over the cited prior art reference(s) as presented above.
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 7/27/2026.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yuki (USPN 4,554,323) discloses a polymerizable, optically active polymer produced from (meth)acryloyl monomers including alkyl-substituted N,N-diphenyl acrylamides.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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