DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller, US Pat. 2510647.
Regarding claim 10, Miller teaches an acenaphthylene homopolymer having a molecular weight of 3,200-3,300 or up to 150,000 (col. 1 ln. 5-32).
Claims 1, 5, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al., US 2003/0114598 A1.
Regarding claims 1 and 10, Li teaches a resin composition comprising a thermosetting resin and an acenaphthylene homopolymer having a molecular weight of up to 20,000 (Abstract, [0019]-[0025], [0135]), the acenaphthylene polymer being present in an amount of 10-50% by mass relative to the total thermosetting resin component and acenaphthylene homopolymer component ([0136]).
Regarding claims 5 and 8, Li teaches that the resin may be formed into a film or use in a printed wiring board ([0152]-[0153]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al., US 2003/0114598 A1 as applied above.
Regarding claim 3, Li teaches a resin composition as discussed above. The teachings of Li differ from the present invention in that Li does not teach the presence of vinylbenzyl groups in the thermosetting resin. Li does, however, teach that the resin should include an adhesion promoting component that features vinyl groups ([0114], [0118]) and teaches that the adhesion promoting component may be a cyclic aromatic compound ([0118]). It would have been obvious to one of ordinary skill in the art to use a compound with a vinylbenzyl group as the adhesion promoting compound of Li because doing so would be consistent with Li’s teaching that the adhesion promoting compound should include a vinyl group and a cyclic aromatic compound.
Claims 4, 6-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., US 2003/0114598 A1 as applied above, in view of Nakatani et al., US 2002/0159242 A1.
Regarding claims 4, 6-7, and 9, the teachings of Li differ from the present invention in that although Li teaches that the resin composition may be used to make substrates for circuit boards as discussed above, Li does not specifically teach that the substrate is a prepreg, the use of a foil, or the presence of a semiconductor element. It is, however, standard and well-known in the art that such circuit boards may feature prepreg substrates with metal foil laminates and semiconductor elements on the surface of the board. See, for example, Nakatini’s [0085] and [0108]. It would have been obvious to one of ordinary skill in the art to make the circuit board of Li feature a prepreg with a metal foil laminate and semiconductor elements on the surface because one of ordinary skill in the art would understand such a construction to be common in the art, and because Nakatini explicitly teaches such a construction as appropriate for a circuit board.
Conclusion
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IAN A. RUMMEL
Examiner
Art Unit 1785
/IAN A RUMMEL/Primary Examiner, Art Unit 1785
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