DETAILED ACTION
Applicant’s amendment submitted on August 25, 2026 (“amendment”) in response to the Office action mailed on June 11, 2026 (“previous OA”) have been fully considered.
Support for the amendment to claims 1 and 2 can be found in paragraphs 0019, 0023, and 0035 of the specification.
In view of the amendment, the objection to claims 2, 3, and 5 as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-8 and 10-13 under 35 USC 112(b) is withdrawn.
In view of the amendment, the rejection of claim 2 under 35 USC 112(d) is withdrawn.
In view of the amendment, the rejection of claims 1-4, 6-8, and 10-13 under 35 USC 103 as being unpatentable over Abe et al. (US 20190281697 A1) in view of Kushihara et al. (JP201999755A) and as evidenced by Tech Data Sheet “BMI-3000” from Designer Molecules Inc. (“Tech Data Sheet”) is withdrawn. Kushihara does not teach or suggest a benzoxazine resin having a site represented by formula (1) where R represents a hydrocarbon group having 12 or more carbon atoms and mixing ratio as claimed.
In view of the amendment, a new rejection under 35 USC 103 over Abe et al. (US 20190281697 A1) in view of Sato et al. (JP 2021195392A) and as evidenced by Tech Data Sheet of “BMI-3000” from Designer Molecules Inc. (“Tech Data Sheet”) is introduced.
Claim Objections
Claim 1 is objected to because of the following informalities: at line 4, replace the recitation “the mixing ratio (mass ratio)” with “mass ratio” in order to better characterize the claimed invention.
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.
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 20190281697 A1) in view of Sato et al. (JP 2021195392A) and as evidenced by Tech Data Sheet “BMI-3000” from Designer Molecules Inc. (“Tech Data Sheet”).
As to claim 1, Abe discloses a resin composition (adhesive composition comprising a resin composition) comprising a curable resin having at least two maleimide groups (maleimide resin) (abstract, 0013, 0014) and benzoxazine resin (0084). Further, Abe discloses that maleimide resin has weight average molecular weight of 3,000 or more (0067). The resin composition of Abe is useful in semiconductor as formation of inter-wiring layer (abstract, 0001).
As to claim 1, the difference between the claimed invention and the prior art of Abe is that Abe is silent as to disclosing benzoxazine resin having a site represented by formula 1 and mixing ratio (mass ratio) of the maleimide resin to benzoxazine resin of 50/50 to 99/1 as claimed.
Sato discloses thermosetting composition that can improve precuring time and productivity of electrical and electronic materials such as semiconductors (0005). Further, the thermosetting composition of Sato is used as adhesive (0017). Further, the thermosetting composition of Sato includes polymaleimide group containing compound (maleimide resin), an aromatic polyamine compound, a benzoxazine compound, and an alicyclic amine compound (0006). Further, as the benzoxazine compound, Sato discloses conventionally known thermosetting compounds such as CR-276 manufactured by Tohoku Chemicals (0009). The examiner submits that benzoxazine compound CR-276 disclosed by Sato is identical to the benzoxazine compound disclosed by present application (see 0063 of the present application specification). Therefore, absent any factual evidence on the record, it is reasonable to presume that CR-276 of Sato inherently has a site represented by formula (1), where R represents hydrocarbon group having 12 or more carbon atoms.
Sato further discloses that the mass of the benzoxazine compound is 0.1 to 60% by mass relative to the total mass of the polymaleimide group containing compound and the benzoxazine compound (see under “(Request item 2)” under “[Claims]”). Therefore, as person having ordinary skill in the art would recognize that the balance amount of the polymaleimide compound in Sato is 40% to 99.9% by mass. As such, the ratio of polymaleimide (maleimide resin) to benzoxazine resin in Sato is 40/60 to 99.9/0.1. The claimed mass ratio of the maleimide resin to benzoxazine resin of 50/50 to 99/1 overlaps or lies within the mass ratio disclosed by Sato such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
The examiner submits that Abe as set forth previously desires maleimide resin and benzoxazine resin. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select any of the conventionally available benzoxazine resins of Sato including CR-276 and use it in the composition of Abe in the mass ratio disclosed by Sato, because Abe desires benzoxazine resin and maleimide resin in the formation of the resin composition.
As to claims 2-5, Sato as set forth previously discloses identical benzoxazine resin as present application (CR-276). As such, it is clear to one of ordinary skill in the art that Sato meets claims 2-5.
As to claim 6, Sato as set forth previously discloses that the mass of the benzoxazine compound is 0.1 to 60% by mass relative to the total mass of the polymaleimide group containing compound and the benzoxazine compound (see under “(Request item 2)” under “[Claims]”). Thus, the mass of the benzoxazine compound disclosed by Sato overlaps with the claimed range of more than 0 parts by mass and 20 parts by mass or less based on 100 parts by mass of the resin composition such that prima facie case of obviousness exists.
As to clams 7 and 8, Abe does not explicitly disclose softening point of the maleimide resin. However, Abe discloses commercially available maleimide resins such as BMI-3000 manufactured by Designer Molecules Inc. (0066). The examiner submits that as evidenced by the Tech Data Sheet, BMI-3000 has melting point of 80°C, which is interpreted to read as softening point.
As to claim 10, while Abe mentions epoxy resin (0084), epoxy resin is one of the alternative thermosetting resins (0084 disclosing “These may be used alone or may be used as mixture of two or more…”). Thus, the adhesive composition of Abe is free of epoxy resin.
As to claim 11, Abe discloses that the resin composition includes filler (0129).
As to claim 12, Abe discloses curing of the resin composition to form an inter-wiring layer (0013).
As to claim 13, Abe as modified by Sato is silent as to disclosing properties of relative permittivity and dielectric loss tangent as claimed. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Given that Abe as modified by Sato as set forth previously render obvious claimed adhesive layer, absent any factual evidence on the record, it is reasonable to presume that the aforementioned properties are inherently present in the adhesive layer of Abe as modified by Sato.
Response to Arguments
Applicant's arguments filed on August 25, 2026 have been fully considered. Given that the examiner has introduced a new ground of rejection, applicant’s arguments are addressed to the extent applicable to the current rejection of record.
Applicant argues that Sato does not teach or suggest the combination recited in claim 1, including a maleimide resin having a molecular weight of 3.000 or more, the mixing ratio, and R represents a hydrocarbon group having 12 or more carbon atoms. Page 10 of the amendment .
The examiner respectfully disagrees. As set forth in the current OA, the primary reference of Abe is relied upon to render obvious claimed molecular weight of maleimide resin. Further, as set forth in the current OA, Sato renders obvious claimed mixing ratio. Moreover, as set forth in the current OA, Sato and applicant disclose identical benzoxazine resin (CR-276). At present, there is no factual evidence presented by applicant that would show that CR-276 benzoxazine resin disclosed by Sato does not have a hydrocarbon group (R) having 12 or more carbon atoms as claimed. As such, applicant’s arguments are not found persuasive.
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
October 8, 2026
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