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 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. 18/846,436 (reference application, hereinafter “’436”). 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, ‘436 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 a layer 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 arts 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 ‘436 regarding the surface coated titanium oxide having 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, given that ‘436 discloses an otherwise identical resin composition made from an otherwise identical surface coated titanium oxide and an otherwise identical thermosetting compound as that presently claimed, it is clear the surface coated titanium oxide of ‘436 would necessarily inherently have a mass reduction rate in heating from 30°C to 300°C at a heating rate of 10°C/min of 0.43 mass% or less, absent evidence to the contrary.
It is noted that ‘436 additionally requires the resin composition have a water absorption rate calculated by formula (i) being 0.40% or less, where formula (i) is 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, 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 resin composition of the present claims from having this property, and thus the more resin composition of ‘436 is encompassed by the resin composition of the present claims.
With respect to claim 11, ‘436 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, ‘436 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, ‘436 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, ‘436 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, ‘436 discloses the resin composition further comprises a filler (C) different from the surface coated titanium oxide (A) (claim 15).
With respect to claim 16, ‘436 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, ‘436 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, ‘436 discloses wherein the resin composition is for a printed wiring board (claim 18).
With respect to claim 19, ‘436 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, ‘436 discloses a resin sheet comprising the resin composition according to claim 1 (claim 20).
With respect to claim 21, ‘436 discloses a laminate comprising the prepreg according to claim 19 (claim 21).
With respect to claim 22, ‘436 discloses a laminate comprising the resin sheet according to claim 20 (claim 22).
With respect to claim 23, ‘436 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, ‘436 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, ‘436 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).
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, 14-23, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, and 9-20 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 the surface coated titanium oxide having 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, 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 surface coated titanium oxide of ‘932 would necessarily inherently have a mass reduction rate in heating from 30°C to 300°C at a heating rate of 10°C/min of 0.43 mass% 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 has an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle, and the inorganic oxide 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 claim 1 is 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 has an organic layer and/or an inorganic oxide layer on the surface of a titanium oxide particle, and the inorganic oxide is 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).
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 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 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Tadokoro et al. (WO 2019/203291 A1, “Tadokoro”) in view of Takimoto et al. (US 2019/0048184 A1, “Takimoto”) 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”). The disclosure of Tadokoro is based off US 2021/0147614 A1, which serves as an English language equivalent.
With respect to claims 1-2, 4-5, and 9-10, 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 a pigment and 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. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). 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 compound ([0139]), and compounds having polymerizable unsaturated groups ([0139]).
However, Tadokoro does not disclose wherein the titanium oxide is surface coated.
Takimoto teaches resin composition containing a white pigment ([0009]), where the white pigment is made from titanium oxide including CR-63, which has a surface treatment of 3% silica-alumina and dimethyl silicone (i.e., an inorganic oxide layer and an organic layer) and has an amount of chemically bonded water of 2,600 ppm (0.26%) (Table 1, [0268]). Given that CR-63 is identical to that used in the present invention (instant specification, [0070], page 30, “Such surface coated titanium oxide (A) can be a commercial product. Examples of the commercial product include CR-63”), it would necessarily inherently have a mass reduction rate in heating from 30°C to 300°C at a heating rate of 10°C/min of 0.43 mass% or less, absent evidence to the contrary.
Tadokoro and Takimoto are analogous inventions in the field of resin coatings containing titanium oxide pigments.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use CR-63 of Takimoto as the titanium oxide pigment in Tadokoro and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
With respect to claim 3, while there may be no explicit disclosure from Tadokoro in view of Takimoto regarding the titanium oxide having the organic layer on the surface of the inorganic oxide layer, given that CR-63 is identical to that used in the present invention (instant specification, [0070], page 30, “Such surface coated titanium oxide (A) can be a commercial product. Examples of the commercial product include CR-63”), it would necessarily inherently have the organic layer on the surface of the inorganic oxide layer, absent evidence to the contrary.
With respect to claims 6-7, Takimoto teaches CR-63 (corresponding to the claimed surface coated titanium oxide as set forth above) has a surface treatment of 3% silica-alumina and dimethyl silicone (i.e., an inorganic oxide layer and an organic layer) (Table 1, [0268]). The dimethyl silicone corresponds to the claimed organosilicon compound that is an organopolysiloxane.
With respect to claim 8, Takimoto teaches CR-63 (corresponding to the claimed surface coated titanium oxide as set forth above) has a surface treatment of 3% silica-alumina and dimethyl silicone (i.e., an inorganic oxide layer and an organic layer) (Table 1, [0268]). Thus, the content of titanium oxide in the surface coated titanium oxide is 97 mass% (100-3 = 97), which falls within the claimed range.
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]).
With respect to claims 19 and 21, Tadokoro discloses a prepreg made by coating or impregnating (i.e., penetrating) a base material with the thermosetting resin composition ([0010], item (14)) and a laminate comprising the prepreg ([0010], item (16)).
With respect to claims 20 and 22, Tadokoro discloses the thermosetting composition is used to make a prepreg ([0010], item (14)), which is then used to make a laminate ([0010], item (16)). Thus, the thermosetting composition forms a resin sheet by virtue of being the prepreg, and is part of a laminate.
With respect to claim 23, Tadokoro discloses a metal foil-clad laminate comprising the prepreg, which is made from the thermosetting composition, having a metal foil disposed on one side or each of both surfaces of the prepreg ([0010], item (17)).
With respect to claim 24, Tadokoro discloses a metal foil-clad laminate comprising the prepreg, which is made from the thermosetting composition, having a metal foil disposed on one side or each of both surfaces of the prepreg, which necessarily forms the laminate as claimed ([0010], item (17)).
With respect to claim 25, Tadokoro discloses a printed wiring board comprising an insulating layer formed using the prepreg, which is made from the thermosetting resin composition, and a conductor layer formed on a surface of the insulating layer ([0010], item (18)).
Response to Arguments
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections of claims 1-25 over Tadokoro in view of Kitamura (JP 2015-067655 A) are withdrawn. This is because Kitamura’s surface coated titanium oxide does not meet the claimed mass reduction rate being 0.43 mass% or less. However, upon updating the searches and reconsideration, claims 1-25 are now rejected under 35 U.S.C. 103 as being unpatentable over Tadokoro in view of Takimoto as set forth above.
Applicant's arguments filed 24 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. Given that it is not clear what is meant by “type” or what epoxy resins or cyanate ester compounds are encompassed by these phrases, 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 of the co-pending applications 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 specifications of the co-pending applications to fill a gap in the claims since the non-statutory double patenting rejections do not reference the specifications of 18/846,436 (“’436”) or 18/561,932 (“’932”). As set forth in the non-statutory double patenting rejections above, the examiner acknowledges neither ‘436 and ‘932 disclose the surface coated titanium oxide having 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. However, given that both ‘436 and ‘932 disclose and claim otherwise identical resin compositions made from otherwise identical surface coated titanium oxide and otherwise identical thermosetting compounds as that presently claimed, it is clear the surface coated titanium oxide of ‘436 and ‘932 would necessarily 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, absent evidence to the contrary. This theory of inherency does not reference nor rely on the specifications of either ‘436 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 ‘436 or ‘932 would not inherently possess the claimed mass reduction rate. The non-statutory double patenting rejections are maintained as set forth above.
Regarding the 35 U.S.C. 103 rejections, Applicant argues that while Tadokoro discloses the use of titanium white, Tadokoro discloses the use of other inorganic fillers and discloses the use of preferred fillers such as silica, boehmite, and alumina, and exemplifies only silica, such that one of ordinary skill in the art would select silica as the inorganic filler. Applicant additionally argues there is no motivation to select titanium white from the list of inorganic fillers disclosed by Tadokoro. Applicant further argues Kitamura’s surface coated titanium oxide does not satisfy the claimed mass reduction rate, and that Kitamura solves a different problem than Tadokoro. The examiner disagrees.
In response to Applicant’s arguments, it is firstly noted that the 35 U.S.C. 103 rejections no longer rely on Kitamura as a reference for the reasons set forth above; thus, Applicant’s arguments drawn to Kitamura have been considered but are moot. As set forth above, claims 1-25 are now rejected under 35 U.S.C. 103 as being unpatentable over Tadokoro in view of Takimoto. The examiner acknowledges Tadokoro does not disclose the surface coated titanium oxide as claimed. However, Takimoto teaches resin composition containing a white pigment ([0009]), where the white pigment made from titanium oxide including CR-63, which has a surface treatment of 3% silica-alumina and dimethyl silicone (i.e., an inorganic oxide layer and an organic layer) and has an amount of chemically bonded water of 2,600 ppm (0.26%) (Table 1, [0268]). Given that CR-63 is identical to that used in the present invention (instant specification, [0070], page 30, “Such surface coated titanium oxide (A) can be a commercial product. Examples of the commercial product include CR-63”), it would necessarily inherently have a mass reduction rate in heating from 30°C to 300°C at a heating rate of 10°C/min of 0.43 mass% or less, absent evidence to the contrary. Tadokoro and Takimoto are analogous inventions in the field of resin coatings containing titanium oxide pigments. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use CR-63 of Takimoto as the titanium oxide pigment in Tadokoro and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Because titanium white is known as a pigment (see Ce.St.Art, page 1, “Titanium white is… the pigment that provides the color, titanium dioxide…”), one of ordinary skill in the art would look to any known titanium oxide pigment, including CR-63, and thereby arrive at the claimed invention.
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 Tadokoro discloses inorganic fillers other than titanium white. However, given that the inorganic fillers disclosed by Tadokoro incudes titanium oxide, 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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