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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/11/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (WO2012102212 - see machine translation attached) in view of Mizuno (WO2020194920A1 - corresponding U.S PG Pub 20210403702A1 used for citations).
Regarding claim 1, Nishimura, drawn also to the art of a resin composition sheet and a method of forming a laminate with a resin sheet (10) (insulating layer), metal foil (30) +wiring layer (40) (circuit pattern), metal substrate (20) (base substrate), and an electronic component (LED light source member) (Title; Abstract), discloses a method of providing a resin sheet and laminating a resin sheet with a metal wiring board with the insulating layer between a metal foil wiring layer and metal substrate, and further a step of an electronic component on the metal foil wiring layer ([0146 & 0155]). Essentially, Nishimura discloses a method of laminating 4 different layers, a resin sheet, a metal foil wiring layer, a metal substrate, and an electronic component, with the electronic component provided on the metal foil wiring layer and the resin sheet bonding the metal substrate and metal foil wiring layer, and being disposed between the two, akin to the instantly claimed method in instant claim 1 (see also [0152-0159]).
Regarding the specific order of the steps or operation of the steps, it is noted that the instant claim does not explicitly claim a specific order of steps, i.e. subsequent/simultaneous etc. but rather only instantly claims a set of steps (i.e. the 4 steps identified above). Further, it is noted that a rearrangement of steps or a splitting of simultaneous steps or vice versa is held to be obvious and a product of ordinary skill in the absence of new or unexpected results (MPEP 2144.04 IV (C)).
Regarding the specific limitations as pertaining to the resin composition, Nishimura has disclosed the resin composition containing an epoxy bisphenol type A resin [0064], and has also disclosed a curing agent can be an amine curing agent [0092], while also disclosing a filler [0093]. Nishimura has not explicitly disclosed a curing agent, curing accelerator, and stabilizer, as instantly claimed.
Mizuno, drawn also to the art of a thermosetting epoxy resin composition used in circuit board laminate [0002] insulating layers (Abstract; [0010-0011]), discloses an epoxy resin composition with an epoxy bisphenol type A resin [0034], filler [0062], a curing agent as claimed (aromatic amine with formula (1)) [0035-0038], a curing accelerator as claimed (boron-phosphorus complex with formula (2)) [0043-0047], and a stabilizer as claimed (phosphorus compound with formula (3)) [0052-0055].. Mizuno discloses that such an epoxy resin composition provides a cured film that is excellent in voltage resistance, adhesiveness, and heat resistance in a short curing time [0012].
It would have been obvious to an ordinarily skilled artisan before the effective filing date of the instant invention, to have modified the method of Nishimura, with the resin composition, and specifically, the curing agent, curing accelerator, and stabilizer, as disclosed by Mizuno, to arrive at the instant invention, in order to obtain an insulating layer (once the composition is cured to form a cured film) that has excellent voltage resistance, adhesiveness, and heat resistance in a short curing time.
Regarding claim 2, Nishimura discloses that the resin sheet is semi-cured (B-stage) [0140] and applied to the metal substrate and then fully cured (C-stage) [0146] when laminating with the metal foil wiring layer [0176-0177].
Regarding claims 3-5 & 7 (claims recite similar limitations with different dependencies), Nishimura discloses a step of applying a resin composition to a base sheet (plastic film, PET – [0132 & 0165]), and heating a resin composition (drying) to form a semi-cured resin sheet [0165], and then applying the resin sheet (base sheet + semi-cured resin) to a base substrate and heating and pressurizing [0169], and peeling the PET film [0169], and then further heating and pressurizing a laminate of the resin sheet between a metal foil wiring layer and metal substrate to temporarily bond and fully cure the resin sheet [0176 & 0169 & 0155]. Nishimura discloses the temperature range for drying to be between 50oC to 110oC [0123], and discloses the temperature range for semi-curing to be between 70oC to 160oC [0126 & 0176] and a pressure to be 1MPa [0176 & 0132 & 0135], and further the temperature range for fully curing and temporarily bonding to be between 80oC to 250oC and a pressure to be between 0.5MPa to 8 MPa [0155 & 0169]. Thus the ranges for the temperatures and pressures as claimed in instant claims 3-5 & 7 are obviated as the ranges for the temperatures and pressures disclosed by Nishimura form overlapping and encompassing ranges with the instantly claimed ranges. The courts have held that in the case where the claimed ranges "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) (MPEP 2144.05(I)).
Regarding claims 6 & 8 (both claims have same limitations but different dependencies), Nishimura has disclosed the resin sheet being a cured film of a latent curable resin composition i.e. a resin composition that is cured in stages (see claim 2 rejection above).
Regarding claims 9-11 (the claims have same limitations but different dependencies), Nishimura has disclosed the resin sheet being a cured film of a latent curable resin composition i.e. a resin composition that is cured in stages (see claim 2 rejection above).
Response to Arguments
Applicant’s arguments, see RCE, filed 08/11/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C 102(a)(1) and 35 U.S.C 103 over Nishimura have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nishimura and Mizuno, to address the new limitations as pertaining to the resin composition, introduced via RCE filed 08/11/2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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