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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13 and Species B (claim 10) in the reply filed on June 1, 2026 is acknowledged. The traversal is on the ground(s) that Species A (claim 9) and Species B (claim 10) do not represent distinct inventions, but instead closely related embodiments of the same inventive concept directed to controlling the presence of amount of epoxy resin within the same adhesive composition. This is not found persuasive in view of the lack of unity analysis as set forth on pages 3-5 of the Office action mailed on April 23. 2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 14-17 and withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 1, 2026.
Claim Objections
Claims 2, 3, and 5 are objected to because of the following informalities:
As to claims 2, 3, and 5, insert “the” before “formula (1)” to make it clear that “formula (1)” refers to “formula (1)” in claim 1.
Appropriate correction is required.
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 1-8 and 10-13 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.
As to claims 1 and 4, these claims recite “unsaturated binding site”. It is unclear in view of what is meant by this recitation. For example, it is unclear whether applicant intends to claim unsaturated hydrocarbon group/hydrocarbon group containing unsaturation (e.g. hydrocarbon group containing carbon to carbon double bond).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites R has 20 or less carbon atoms, whereas parent claim 1 recites R has 4 or more carbon atoms. As such, claim 2 fails to further limit the subject matter of the claim upon which it depends, because the scope of this claim encompasses less than 4 carbon atoms.
Claim 2 should be recited as “The adhesive composition according to claim 1, wherein R in the formula (1) has from 4 to 20 carbon atoms.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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 1-4, 6-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 20190281697 A1) in view of Kushihara et al. (JP201999755A) 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) having weight average molecular weight of 1,000 or more (0067) and benzoxazine resin (0084). 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 of formula 1.
Kushihara discloses a thermosetting resin composition (adhesive composition) having maleimide compound, allyl group containing phenol resin, and benzoxazine compound(s) (see 0007-0011). The thermosetting resin of Kushihara is useful in semiconductor related materials (0002).
An example of the benzoxazine compound disclosed by Kushihara (0009) is reproduced below for convenience
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The examiner submits that the above formula of benzoxazine meets claimed benzoxazine resin having a site represented by formula (1), wherein the hydrocarbon group R2 having 1 to 10 carbon atoms overlaps with the claimed hydrocarbon group R having 4 or more carbon atoms.
Abe desires benzoxazine resin but is silent as to disclosing specific 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 benzoxazine resins of Kushihara including the claimed and use it in the composition of Abe, because Abe desires benzoxazine resin in the formation of the resin composition.
As to claim 2, the hydrocarbon group R2 of benzoxazine resin of Kushihara disclosed above has 1 to 10 carbon atoms.
As to claim 3, a person having ordinary skill in the art would recognize that the hydrocarbon group R2 of benzoxazine resin of Kushihara as set forth previously includes linear and/or branched structures (see also 0026 disclosing R2 as ethyl group).
As to claim 4, Kushihara discloses that the hydrocarbon group R2 of benzoxazine resin is a monounsaturated aliphatic hydrocarbon group having 1 to 10 carbon atoms (0009 and 0026), which is interpreted to suggest e.g. one unsaturated binding site.
As to claim 6, Abe is silent as to disclosing the amount of benzoxazine resin.
Kushihara discloses that the amount of benzoxazine compound is preferably 10 to 35 parts by mass per 100 parts by mass of the resin composition (0032) in order to maintain curability of the resin composition and to avoid decreasing solubility of maleimide compound (0032). The claimed range of more than 0 parts by mass and 20 parts by mass or less overlaps or within the range disclosed by Kushihara such that prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the amount of the benzoxazine resin as claimed and as rendered obvious by Kushihara, motivated by the desire to form adhesive composition having suitable curability and to avoid decreasing solubility of maleimide.
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 Kushihara 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. Given that Abe as modified by Kushihara 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 Kushihara.
Claim 5 is rejected under 35 U.S.C. 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 of “BMI-3000” from Designer Molecules Inc. (“Tech Data Sheet”), as applied to claim 1 above, and further in view of Sato et al. (JP 2021195392A).
Abe is silent as to disclosing claim 5.
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 e.g. adhesive (0017). Further, the thermosetting composition of Sato includes polymaleimide group containing compound, 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 CR-276 is identical to disclosed by the present application. Therefore, absent any factual evidence on the record, it is reasonable to presume that CR-276 of Sato has claimed R of formula 5.
Abe desires benzoxazine resin but is silent as to disclosing specific 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, because Abe desires benzoxazine resin in the formation of the resin composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Document High-Performance Biomass Resin- Cashew Benzoxazine discloses benzoxazine resins, JP2014227542 A discloses bismaleimide resin composition having excellent heat resistance, BR102020006743 A2 discloses development of benzoxazine resins.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
June 9, 2026
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