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 .
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/846,740 (reference application, hereinafter “’740”). 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 0.43 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).
The above double patenting rejections are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-5, 9-12, and 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, and 9-13 of copending Application No. 18/561,932 (reference application, hereinafter “’932”). 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, 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, the surface-coated titanium oxide (C) has an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle, and 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, 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 by mass of a total resin solid content in the resin composition, 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, the surface-coated titanium oxide (C) having an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle, and the inorganic oxide layer being one or more selected from the group consisting of a layer comprising silica, a layer comprising zirconia, and a layer comprising alumina, 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 1).
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 1).
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).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 the action mailed 07 April 2026.
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]).
Response to Arguments
The examiner notes that withdrawn claims 19-25 were inadvertently included in the non-statutory double patenting rejections. The non-statutory double patenting rejections of claims 19-25 have been withdrawn. Claims 19-25 remain withdrawn from consideration.
Due to the cancellation of claim 14 in copending Application No. 18/561,932 (see the claims of copending Application No. 18/561,932 filed 12 June 2026), the non-statutory double patenting rejection of present claim 18 over claim 14 in copending Application No. 18/561,932 is withdrawn.
Applicant's arguments filed 29 June 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 112(b) rejections of claims 12 and 14, Applicant argues the claims are definite because the suffix “-type” is known to those of ordinary skill in the art. Applicant points to claims 5 and 7 of US 12,134,696 B2 for support. The examiner disagrees.
In response to Applicant’s argument, 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). See also MPEP 2173.05(b).III.E. It is irrelevant what claims 5 and 7 of US 12,134,696 B2 recite because those claims are not being examined, but rather the present claims are being examined. In light of the above case law, claims 12 and 14 are indefinite. The 35 U.S.C. 112(b) rejections of claims 12 and 14 are maintained.
Regarding the double patenting rejections, Applicant argues the non-statutory double patenting rejections should be withdrawn because the examiner allegedly improperly relies on the specification in order to fill a gap in the claims. The examiner disagrees.
In response to Applicant’s argument, it is unclear why Applicant argues the examiner used the specification to fill a gap in the claims since the non-statutory double patenting rejections do not reference the specifications of 18/846,740 (“’740”) or 18/561,932 (“’932”). As set forth in the non-statutory double patenting rejections, the examiner acknowledges neither ‘740 nor ‘932 disclose the claimed water absorption rate. However, given that both ‘740 and ‘932 disclose and claim an identical otherwise identical resin compositions made from otherwise identical surface coated titanium oxide and an otherwise identical thermosetting compounds as that presently claimed, it is clear the resin compositions of ‘740 and ‘932 would necessarily inherently have a water absorption rate of 0.40% or less, absent evidence to the contrary. This theory of inherency does not reference nor rely on the specifications of either ‘740 or ‘932. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references disclose all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Applicant has provided no evidence (i.e., data) demonstrating the claims of ‘740 or ‘932 would not inherently possess the claimed water absorption rate. The non-statutory double patenting rejections of are maintained as set forth above.
Regarding the 35 U.S.C. 103 rejections, Applicant argues Tadokoro discloses a variety of inorganic fillers other than titanium white, discloses preferred fillers, and uses only silica in its examples, such that one of ordinary skill in the art would select silica as the inorganic filler, and that there is no motivation to intentionally single out titanium white from the list and replace it with the surface-coated titanium oxide of Kitamura. Applicant further argues that PF-728 does not inherently satisfy the claimed water absorption rate and argues the water absorption rate is influenced by the filler and the internal structure of the cured resin composition, and argues Tadokoro in view of Kitamura does not inherently possess the claimed water absorption rate; Applicant points to the examples for support of unexpectedly superior results. Applicant lastly argues Tadokoro and Kitamura solve different problems, such that one of ordinary skill in the art would not combine the cited references. The examiner disagrees.
In response to Applicant’s argument that Tadokoro discloses inorganic fillers other than titanium white, discloses preferred fillers, exemplifies only silica, and does not provide motivation to specifically select titanium white, this is not found persuasive for the following reasons.
Firstly, the examiner acknowledges that Tadokoro discloses inorganic fillers other than titanium white. However, given that the inorganic fillers disclosed by Tadokoro includes titanium oxide identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any inorganic filler in Tadokoro, including the claimed titanium oxide, absent some evidence to the contrary. One of ordinary skill in the art would consider all the inorganic fillers disclosed by Tadokoro to be equivalent and interchangeable and equally suitable, absent a showing of criticality by Applicant of the claimed titanium oxide. In MPEP 2141.III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Tadokoro discloses a finite number of inorganic fillers and given that the reference discloses all the inorganic fillers being equally applicable, there would be a reasonable expectation of success when using the titanium oxide as set forth by the examiner. It is further noted that the fact that “the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious…”. See, e.g., Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”).
Secondly, the examiner acknowledges that Tadokoro discloses preferred fillers. However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442 (CCPA 1971). The fact remains that Tadokoro discloses the use of titanium white (i.e., titanium oxide) as set forth above.
Thirdly, the examiner acknowledges that Tadokoro exemplifies the use of silica. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The fact remains that Tadokoro discloses the use of titanium white (i.e., titanium oxide) as set forth above.
In response to Applicant’s argument that PF-728 does not inherently satisfy the claimed water absorption rate and that Tadokoro in view of Kitamura does not inherently possess the claimed water absorption rate, this is not found persuasive. The examiner is not suggesting that PF-728 alone satisfies the claimed water absorption rate, but rather the combined resin composition of Tadokoro in view of Kitamura meets the claimed water absorption rate. As set forth above, while there may be no explicit disclosure from Tadokoro in view of Kitamura regarding a water absorption rate as claimed, 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 (that is, Tadokoro in view of Kitamura together discloses the same resin composition, the same surface coated titanium oxide, and the same thermosetting compound as the present claims), 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.
The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Applicant has provided no evidence (i.e., data) demonstrating the resin composition of Tadokoro in view of Kitamura would not necessarily inherently possess the claimed water absorption rate.
In response to Applicant’s argument that they have discovered unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the data relates to specific surface coated titanium oxides having specific surface coatings, and the specific surface coated titanium oxides are present in specific amounts ([0216], [0218], [0220], [0222], [0224]). However, the present claims broadly allow for any surface coated titanium oxide present in any amount.
Secondly, the data relates to specific thermosetting compounds present in specific amounts ([0216], [0218], [0220], [0222], [0224]). However, the present claims broadly allow for any thermosetting compound present in any amount.
Thirdly, the data relates to specific water absorption rates being 0.31%, 0.36%, 0.31%, 0.34%, and 0.32% (page 124, Table 1), whereas the present claims broadly allow for a water absorption rate of 0.40% or less. There is no data at the upper (0.40%) or lower (0%) endpoints of the claimed range.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Tadokoro and Kitamura solve different problems such that one of ordinary skill in the art would not combine the cited references, this is not persuasive. Both Tadokoro and Kitamura are drawn to prepreg laminates having layers made from thermosetting compounds and containing fillers such as titanium oxide, and thus one of ordinary skill in the art would look to both Tadokoro and Kitamura when addressing prepreg laminates having layers made from thermosetting compounds and containing fillers. Further, Kitamura provides motivation for selecting surface coated titanium oxide in order to provide high visible light reflectivity, high opacity, and high chemical resistance (Kitamura, [0035]) as set forth above.
In light of the above, the 35 U.S.C. 103 rejections of claims 1-18 are maintained.
Applicant’s request for rejoinder has been considered but is denied because no claims are presently allowable.
Conclusion
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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