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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18, in the reply filed on 17 December 2025 is acknowledged.
Claims 19-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 December 2025.
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 12 and 14 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.
With respect to claim 12, the claim recites “biphenyl aralkyl-type epoxy resins” in lines 2-3. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 12, the claim recites “naphthalene-type epoxy resins” in line 3. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 12, the claim recites “naphthylene ether-type epoxy resins” in lines 3-4. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “phenol novolac-type cyanate ester compounds” in lines 2-3. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “naphthol aralkyl-type cyanate ester compounds” in line 3. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “naphthylene ether-type cyanate ester compounds” in line 4. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “xylene resin-type cyanate ester compounds” in lines 4-5. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “bisphenol M-type cyanate ester compounds” in line 5. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “bisphenol A-type cyanate ester compounds” in lines 5-6. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “diallylbisphenol A-type cyanate ester compounds” in line 6. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “bisphenol E-type cyanate ester compounds” in lines 6-7. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “bisphenol F-type cyanate ester compounds” in line 7. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
With respect to claim 14, the claim recites “biphenyl aralkyl-type cyanate ester compounds” in lines 7-8. The addition of the word “type” extends the scope of the claim so as to render it indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 18/846,740 (reference application, hereinafter “’740”, cited as US 2025/0254792 A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1-10, ‘740 discloses a resin composition comprising: (A) a surface coated titanium oxide, and (B) a thermosetting compound (claim 1). The surface coated titanium oxide (A) has an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle (claim 2). The surface coated titanium oxide (A) further has the organic layer on the surface of the inorganic oxide layer (claim 3). A total amount of the organic layer and the inorganic oxide layer is 0.1 to 10 mass% based on 100 mass% of the surface coated titanium oxide (A) (claim 4). The inorganic oxide layer is one or more selected from the group consisting of a layer comprising silica, a layer comprising zirconia, and a layer comprising alumina (claim 5). The organic layer is obtained by surface treating with an organosilicon compound (claim 6). The organosilicon compound comprises one or more selected from the group consisting of silane coupling agents, organosilane, and organopolysiloxane (claim 7). A content of the titanium oxide in the surface coated titanium oxide (A) is 90 to 99.9 mass% based on 100 mass% of the surface coated titanium oxide (A) (claim 8). A content of the surface coated titanium oxide (A) is 50 to 500 parts by mass, based on 100 parts by mass of a total resin solid content in the resin composition (claim 9). The thermosetting compound (B) comprises one or more selected from the group consisting of maleimide compounds, epoxy compounds, modified polyphenylene ether compounds, cyanate ester compounds, phenol compounds, alkenyl-substituted nadiimide compounds, oxetane resins, benzoxazine compounds, and compounds having a polymerizable unsaturated group (claim 10).
While there is no disclosure from ‘740 regarding a water absorption rate calculated by formula (i) being 0.40% or less, where the water absorption rate (%) = [(M2-M1)/M1] × 100, wherein M1 represents a mass (g) of a laminate (a) after drying at 150°C for 1 hour, in which the laminate is formed by penetrating and coating an E glass cloth having a thickness of 0.094 mm with the resin composition, then heating and drying the resultant at 130°C for 3 minutes to obtain a prepreg having a thickness of 0.1 mm, and laminating two sheets of prepregs and subjecting the sheets to vacuum pressing at a surface pressure of 30 kgf/cm2 and a temperature of 220°C for 120 minutes, and M2 represents a mass (g) of the laminate (a) after drying, subjected to moisture absorption treatment at 85°C and 85% relative humidity for 168 hours, given that ‘740 discloses an otherwise identical resin composition made from otherwise identical surface coated titanium oxide and an otherwise identical thermosetting compound as that presently claimed, it is clear the resin composition of ‘740 would necessarily inherently have a water absorption rate of 0.40% or less, absent evidence to the contrary.
It is noted that ‘740 additionally requires the surface coated titanium oxide have a mass reduction rate in heating from 30°C to 300°C at a heating rate of 10°C/min being 0.5 mass% or less, whereas the present claims are silent with respect to this limitation. However, in light of the open-ended language of the present claims (i.e., “comprising”), nothing precludes the titanium oxide of the present claims from having this property, and thus the more specific titanium oxide of ‘740 is encompassed by the titanium oxide of the present claims.
With respect to claim 11, ‘740 discloses wherein the maleimide compound comprises one or more selected from the group consisting of bis(4-maleimidephenyl)methane, 2,2-bis(4-(4-maleimidephenoxy)-phenyl)propane, bis(3-ethyl-5-methyl-4-maleimidephenyl)methane, maleimide compounds represented by formula (1) shown below wherein R1 each independently represents a hydrogen atom or a methyl group and n1 is an integer of 1 to 10, and maleimide compounds represented by formula (2) shown below wherein R2 each independently represents a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, or a phenyl group, and n2 is an average value and represents 1 < n2 ≤ 5 (claim 11).
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With respect to claim 12, ‘740 discloses wherein the epoxy compound comprises one or more selected from the group consisting of biphenyl aralkyl-type epoxy resins, naphthalene-type epoxy resins, and naphthylene ether-type epoxy resins (claim 12).
With respect to claim 13, ‘740 discloses wherein the modified polyphenylene ether compound comprises a compound represented by the formula (3) shown below, wherein X represents an aromatic group, -(Y-O)m- represents a polyphenylene ether moiety, R1, R2, and R3 each independently represent a hydrogen atom, an alkyl group, an alkenyl group, or an alkynyl group, m represents an integer of 1 to 100, n represents an integer of 1 to 6, and q represents an integer of 1 to 4 (claim 13).
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With respect to claim 14, ‘740 discloses wherein the cyanate ester compound comprises one or more selected from the group consisting of phenol novolac-type cyanate ester compounds, naphthol aralkyl-type cyanate ester compounds, naphthylene ether-type cyanate ester compounds, xylene resin-type cyanate ester compounds, bisphenol M-type cyanate ester compounds, bisphenol A-type cyanate ester compounds, diallylbisphenol A-type cyanate ester compounds, bisphenol E-type cyanate ester compounds, bisphenol F-type cyanate ester compounds, and biphenyl aralkyl-type cyanate ester compounds, and prepolymers or polymers of these cyanate ester compounds (claim 14).
With respect to claim 15, ‘740 discloses the resin composition further comprises a filler (C) different from the surface coated titanium oxide (A) (claim 15).
With respect to claim 16, ‘740 discloses wherein the filler (C) comprises one or more selected from the group consisting of silica, alumina, barium titanate, strontium titanate, aluminum nitride, boron nitride, boehmite, aluminum hydroxide, zinc molybdate, silicone rubber powder, and silicone-composite powder (claim 16).
With respect to claim 17, ‘740 discloses wherein a content of the filler (C) is 50 to 300 parts by mass, based on 100 parts by mass of a total resin solid content in the resin composition (claim 17).
With respect to claim 18, ‘740 discloses wherein the resin composition is for a printed wiring board (claim 18).
With respect to claim 19, ‘740 discloses a prepreg, comprising a base material, and the resin composition of claim 1 penetrating or coating the base material (claim 19).
With respect to claim 20, ‘740 discloses a resin sheet comprising the resin composition according to claim 1 (claim 20).
With respect to claim 21, ‘740 discloses a laminate comprising the prepreg according to claim 19 (claim 21).
With respect to claim 22, ‘740 discloses a laminate comprising the resin sheet according to claim 20 (claim 22).
With respect to claim 23, ‘740 discloses a metal foil-clad laminate comprising the laminate according to claim 21, and a metal foil disposed on one side or each of both sides of the laminate (claim 23).
With respect to claim 24, ‘740 discloses a metal foil-clad laminate comprising the laminate according to claim 22 and a metal foil disposed on one or each of both sides of the laminate (claim 24).
With respect to claim 25, ‘740 discloses a printed wiring board comprising an insulation layer, and a conductor layer disposed on one side or each of both sides of the insulation layer, wherein the insulation layer comprises a cured product of the resin composition according to claim 1 (claim 25).
Claims 1-2, 4-5, 9-12, 14-23, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-20 of copending Application No. 18/561,932 (reference application, hereinafter “’932”, cited as US 2024/0254360 A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1 and 10, ‘932 discloses a resin composition comprising (A) a cyanate ester compound, (B) a maleimide compound, and (C) a surface-coated titanium oxide (claim 1). ‘932 further discloses the resin composition further comprises one or more thermosetting resins or compounds selected from the group consisting of epoxy compounds, phenolic compounds (i.e., phenol compounds), modified polyphenylene ether compounds, alkenyl-substituted nadiimide compounds, oxetane resins, benzoxazine compounds, and compounds having a polymerizable unsaturated group (claim 4).
While there may be no explicit disclosure from ‘932 regarding a water absorption rate calculated by formula (i) being 0.40% or less, where the water absorption rate (%) = [(M2-M1)/M1] × 100, wherein M1 represents a mass (g) of a laminate (a) after drying at 150°C for 1 hour, in which the laminate is formed by penetrating and coating an E glass cloth having a thickness of 0.094 mm with the resin composition, then heating and drying the resultant at 130°C for 3 minutes to obtain a prepreg having a thickness of 0.1 mm, and laminating two sheets of prepregs and subjecting the sheets to vacuum pressing at a surface pressure of 30 kgf/cm2 and a temperature of 220°C for 120 minutes, and M2 represents a mass (g) of the laminate (a) after drying, subjected to moisture absorption treatment at 85°C and 85% relative humidity for 168 hours, given that ‘932 discloses an otherwise identical resin composition made from otherwise identical surface coated titanium oxide and an otherwise identical thermosetting compound as that presently claimed, it is clear the resin composition of ‘932 would necessarily inherently have a water absorption rate of 0.40% or less, absent evidence to the contrary.
It is noted that ‘932 additionally requires a content of the cyanate ester compound (A) is 1 to 65 parts by mass, based on 100 parts by mass of a total resin solid content in the resin composition, and a content of the maleimide compound (B) is 15 to 85 parts by mass, based on 100 parts by mass of the total resin solid content in the resin composition, whereas the present claims are silent with respect to these limitations. However, in light of the open-ended language of the present claims (i.e., “comprising”), nothing precludes the resin composition of the present claims from having a cyanate ester compound (A) of 1 to 65 parts by mass, based on 100 parts 9by mass of a total resin solid content in the resin composition, and a content of the maleimide compound (B) being 15 to 85 parts by mass, based on 100 parts by mass of the total resin solid content in the resin composition, and thus the more specific resin composition of ‘932 is encompassed by the broader resin composition of the present claims.
With respect to claim 2, ‘932 discloses wherein the surface coated titanium oxide has an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle (claim 5).
With respect to claim 4, ‘932 discloses a total amount of the organic layer and the inorganic oxide layer is 0.1 to 10 mass%, based on 100 mass% of the surface-coated titanium oxide (claim 6).
With respect to claim 5, ‘932 discloses wherein the inorganic oxide layer is one or more selected from the group consisting of a layer comprising silica, a layer comprising zirconia, and a layer comprising alumina (claim 7).
With respect to claim 9, ‘932 discloses wherein a content of the surface-coated titanium oxide is 50 to 500 parts by mass, based on 100 parts by mass of a total resin solid content in the resin composition (claim 9).
With respect to claim 11, ‘932 discloses wherein the maleimide compound comprises one or more selected from the group consisting of bis(4-maleimidephenyl)methane, 2,2-bis(4-(4-maleimidephenoxy)-phenyl)propane, bis(3-ethyl-5-methyl-4-maleimidephenyl)methane, maleimide compounds represented by formula (2) shown below wherein R1 each independently represents a hydrogen atom or a methyl group and n1 is an integer of 1 to 10, and maleimide compounds represented by formula (3) shown below wherein R2 each independently represents a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, or a phenyl group, and n2 is an average value and represents 1 < n2 ≤ 5 (claim 3).
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With respect to claim 12, ‘932 discloses wherein the epoxy compound comprises one or more selected from the group consisting of biphenyl aralkyl-type epoxy resins, naphthalene-type epoxy resins, and naphthylene ether-type epoxy resins (claim 13).
With respect to claim 14, ‘932 discloses wherein the cyanate ester compound comprises one or more selected from the group consisting of phenol novolac-type cyanate ester compounds, naphthol aralkyl-type cyanate ester compounds, naphthylene ether-type cyanate ester compounds, xylene resin-type cyanate ester compounds, bisphenol M-type cyanate ester compounds, bisphenol A-type cyanate ester compounds, diallyl bisphenol A-type cyanate ester compounds, bisphenol E-type cyanate ester compounds, bisphenol F-type cyanate ester compounds, and biphenyl aralkyl-type cyanate ester compounds, and prepolymers or polymers of these cyanate ester compounds (claim 2).
With respect to claim 15, ‘932 discloses the resin composition further comprises a filler different from the surface-coated titanium oxide (claim 10).
With respect to claim 16, ‘932 discloses the filler comprises one or more selected from the group consisting of silica, alumina, barium titanate, strontium titanate, calcium titanate, aluminum nitride, boron nitride, boehmite, aluminum hydroxide, zinc molybdate, silicone rubber powder, and silicone composite powder (claim 11).
With respect to claim 17, ‘932 discloses a content of the filler is 50 to 300 parts by mass, based on 100 parts by mass of a total resin solid content in the resin composition (claim 12).
With respect to claim 18, ‘932 discloses the resin composition is for use in a printed wiring board (claim 14) (i.e., the resin composition is for a printed wiring board).
With respect to claim 19, ‘932 discloses a prepreg, comprising a base material, and the resin composition of claim 1 penetrating or coating the base material (claim 15).
With respect to claim 20, ‘932 discloses a resin sheet comprising the resin composition according to claim 1 (claim 16).
With respect to claim 21, ‘932 discloses a laminate comprising the prepreg according to claim 15 (corresponding to the claimed prepreg according to claim 19) (claim 17).
With respect to claim 22, ‘932 discloses a laminate comprising the resin sheet according to claim 16 (corresponding to the resin sheet according to claim 20) (claim 20).
With respect to claim 23, ‘932 discloses a metal foil-clad laminate comprising the laminate according to claim 17 (corresponding to the laminate according to claim 21), and a metal foil disposed on one side or each of both sides of the laminate (claim 18).
With respect to claim 25, ‘932 discloses a printed wiring board, comprising: an insulation layer, and a conductor layer disposed on one side or each of both sides of the insulation layer, wherein the insulation layer comprises a cured product of the resin composition according to claim 1 (claim 19).
The above double patenting rejections are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tadokoro et al. (WO 2019/203291 A1, “Tadokoro”) in view of Kitamura (JP 2015-067655 A) and the evidence provided by Ce.St.Art (A brief outline of the historical chronology of the use in painting of the pigment “Titanium White”) and Takimoto et al. (US 2019/0048184 A1, “Takimoto”). The disclosure of Tadokoro is based off US 2021/0147614 A1, which serves as an English language equivalent. The disclosure of Kitamura is based off a machine translation of the reference included with this action.
With respect to claims 1-10, Tadokoro discloses a thermosetting composition ([0001]) that includes fillers ([0140]) including metal oxides including titanium white ([0141]). As evidenced by Ce.St.Art, titanium white is made from titanium dioxide (i.e., titanium oxide) (page 1, “Titanium white is… the pigment that provides the color, titanium dioxide…”). The titanium dioxide is present in an amount of 30-700 parts by mass per 100 parts by mass of the solids of the thermosetting composition ([0146]), which overlaps the presently claimed range. The thermosetting composition includes a thermosetting compound ([0049]) including maleimide compounds ([0123]), epoxy compounds ([0054]), cyanate esters ([0102]), phenolic compounds ([0091]), alkenyl-substituted nadiimide compounds ([0101]), oxetane resins ([0139]), benzoxazine compounds ([0139]), and compounds having polymerizable unsaturated groups ([0139]).
However, Tadokoro does not disclose wherein the titanium oxide is surface coated.
Kitamura teaches a prepreg ([0001]) comprising a resin layer that includes titanium dioxide ([0034-0035]). The titanium dioxide includes that known under the tradename PF-728 ([0069]); as evidenced by Takimoto, PF-728 is subjected to a surface treatment with 8% silica-alumina and a silane coupling agent (Takimoto, [0267]), and therefore the treated titanium dioxide has 92% titanium dioxide. Thus, the PF-728 has an organic layer and an inorganic oxide layer on the surface of the titanium dioxide, where the organic layer is on the surface of the inorganic oxide layer. Such titanium dioxide provides high visible light reflectivity, high opacity, and high chemical resistance (Kitamura, [0035]).
Tadokoro and Kitamura are analogous inventions in the field of prepregs having resin layers containing titanium dioxide pigments.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the titanium white (i.e., titanium dioxide) of Tadokoro to be PF-728 as taught by Kitamura in order to provide a resin layer having high visible light reflectivity, high opacity, and high chemical resistance (Kitamura, [0035]).
Regarding a water absorption rate calculated by the formula (i) being 0.40% or less, where the water absorption rate (%) = [(M2 – M1)/M1] × 100, wherein M1 represents a mass (g) of a laminate (a) after drying at 150°C for 1 hour, in which the laminate is formed by penetrating and coating an E glass cloth having a thickness of 0.094 mm with the resin composition, and then heating and drying the resultant at 103°C for 3 minutes to obtain a prepreg having a thickness of 0.1 mm, and laminating two sheets of the prepregs and subjecting the sheets to vacuum pressing at a surface pressure of 30 kgf/cm2 and a temperature of 220°C for 120 minutes, and M2 represents a mass (g) of the laminate (a) after drying, subjected to moisture absorption treatment at 85°C and 85% relative humidity for 168 hours, while there may be no explicit disclosure from Tadokoro in view of Kitamura regarding this property, given that Tadokoro in view of Kitamura discloses an otherwise identical resin composition comprising an otherwise identical surface coated titanium oxide and an otherwise identical thermosetting compound as that presently claimed, it is clear the resin composition of Tadokoro in view of Kitamura would necessarily inherently have a water absorption rate of 0.40% or less, absent evidence to the contrary.
With respect to claim 11, Tadokoro discloses the maleimide compounds include bis(4-maleimidephenyl)methane, bis(3-ethyl-5-methyl-4-maleimidephenyl)methane, and compounds represented by the formula (4a) shown below, where R4a and R5a each independently represent a hydrogen atom or an alkyl group having 1-5 carbon atoms, each R4b independently represents a hydrogen atom or a methyl group, and s represents an integer of 1 or more ([0123-0125]). Thus, when R4a and R5a are hydrogen atoms, the structure of formula (4a) is identical to the structure of formula (1) presently claimed.
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With respect to claim 12, Tadokoro discloses the epoxy includes biphenyl aralkyl-type epoxy resins ([0063]), naphthalene-type epoxy resins ([0057]), and naphthylene ether-type epoxy resins ([0058]).
With respect to claim 13, given that this claim further limits an optional component (claim 10 provides for one of the compounds, so the modified polyphenylene ether compound is not required), this claim is met by the prior art.
With respect to claim 14, Tadokoro discloses the cyanate esters include naphthol aralkyl-type cyanate esters ([0112]), bisphenol A cyanate esters ([0110]), bisphenol E cyanate esters ([0110]), bisphenol F cyanate esters ([0110]), and biphenyl aralkyl-type cyanate esters ([0112]).
With respect to claims 15-16, Tadokoro discloses the use of other fillers including silica, alumina, aluminum nitride, boron nitride, boehmite, aluminum hydroxide, zinc molybdate, silicone rubber powder, and silicone composite powder ([0141], [0144]).
With respect to claim 17, while Tadokoro discloses the filler, including both titanium dioxide and the claimed filler other than the surface coated titanium oxide, is present in amount of 30-700 parts by mass per 100 parts by mass of the solids of the thermosetting composition (Tadokoro, [0146]), there is no disclosure from Tadokoro in view of Kitamura regarding individual amounts of the surface coated titanium oxide (A) and filler (C). However, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component, i.e. 15-350 parts by mass each, which overlaps the presently claimed range.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
With respect to claim 18, Tadokoro discloses the thermosetting composition is used for printed wiring boards ([0159]).
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Morishita et al. (JP 2007-137050 A, disclosure based off machine translation of reference included with this action) discloses a thermosetting resin composition containing titanium dioxide ([0005]), where the thermosetting resin composition contains a bisphenol A novolac type epoxy resin or a cyanate ester compound ([0005]). The thermosetting resin is used with prepregs ([0005]). The titanium dioxide has a coating layer formed on its surface ([0020]).
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787