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.
Claims 1, 5, 6, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anzai et al., US 4923520.
Regarding claims 1, 6, and 14, Anzai teaches a liquid composition comprising a thermosetting epoxy resin (col. 2 ln. 3-14, Examples 4-10 of col. 5 and 6) and fused silica particles (Abstract). Note that although Anzai does not teach that the silica particles of his invention possess the claimed water vapor adsorption and moisture retention properties, Anzai teaches that the silica may be treated via heating to a temperature of over 1200 C (col. 4 ln 6-18) and subjected to treatment with a silane coupling agent to improve resistance to moisture and humidity (col. 2 ln. 66 – col. 3 ln. 18). As Applicant’s specification teaches that such a heat treatment and silane coupling agent treatment result in the claimed water vapor adsorption and moisture retention properties, it is presumed to be inherent that the particles of Anzai will possess the claimed water vapor adsorption and moisture retention properties.
Regarding claim 5, Anzai teaches that the silica may be present in an amount of 50 to 70 weight percent based on the total weight of the composition (col. 2 ln. 60-65), equating to the silica being present in an amount of 100 to 233 parts by mass with respect to 100 parts of resin.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Anzai et al., US 4923520.
Regarding claim 4, Anzai teaches that the silica particles may have a diameter of 10-50 microns (Abstract). Note that when a claimed range overlaps with or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I).
Claims 1, 4, 6-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al., US 6805958 B2, in view of Anzai et al., US 4923520.
Regarding claims 1 and 6, Nakamura teaches a thermoset epoxy resin comprising silica particles (col. 5 ln. 50-65). The teachings of Nakamura differ from the present invention in that Nakamura does not teach that the silica particles of his invention possess the claimed water vapor adsorption and moisture retention properties. Anzai, however, teaches silica particles that would inherently possess the claimed water vapor adsorption and moisture retention properties, and teaches that the particles of his invention exhibit improved mechanical and electrical properties (Abstract). It would have been obvious to one of ordinary skill in the art to use the particles of Anzai as the silica particles in the resin of Nakamura because the particles of Anzai exhibit improved mechanical and electrical properties, and doing so would result in a product that inherently possessed the claimed water vapor adsorption and moisture retention properties.
Regarding claim 4, Anzai teaches that the silica particles may have a diameter of 10-50 microns (Abstract). Note that when a claimed range overlaps with or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I).
Regarding claim 7, Nakamura teaches that the resin may contain methyl ethyl ketone solvent (col. 6 ln. 18-20).
Regarding claims 8 and 9, Nakamura teaches that the resin may be used to make a prepreg comprising a fibrous glass cloth impregnated with the resin in a cured or semi-cured state (col. 6 ln. 37-54).
Regarding claims 10, 11, and 13, Nakamura teaches that the prepreg may be used as a substrate for a wiring board featuring an adhered copper foil (col. 6 ln. 55 – col. 7 ln. 49, col. 8 ln. 44-66).
Claims 2 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al., US 6805958 B2, in view of Anzai et al., US 4923520, and further in view of Arisawa et al., US 2017/0099731 A1.
Regarding claims 2 and 14-15, the teachings of Nakamura differ from the present invention in that Nakamura does not teach any specific surface area for the silica particles. Arisawa, however, teaches that silica particles in thermosetting resins that are used to make wiring boards preferably have a specific surface area of 0.1 m2/g to 15 m2/g (Abstract, [0032]-[0033]). It would have been obvious to one of ordinary skill in the art to make the silica particles have a specific surface area of 0.1 m2/g to 15 m2/g because Arisawa explicitly teaches such a surface area to be appropriate for silica particles used as fillers in thermosetting epoxy resins for wiring boards.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al., US 6805958 B2, in view of Anzai et al., US 4923520, and further in view of Shiobara et al., US 2021/0403672 A1.
Regarding claim 3, the teachings of Nakamura differ from the present invention in that Nakamura does not teach that the silica particles contain an additional metal element. Shiobara, however, teaches that silica particles in such resins may contain up to 200 ppm of an additional metal so as to achieve a low dielectric loss tangent (Abstract, [0104]). It would have been obvious to one of ordinary skill in the art to make the silica particles contain up to 200 ppm of an additional metal because Shiobara explicitly teaches such a metal content to be appropriate for silica particles that are used in thermosetting resins, and because doing so would result in a product with a low dielectric loss tangent.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al., US 6805958 B2, in view of Anzai et al., US 4923520, and further in view of Gay, US 2018/0279481 A1.
Regarding claim 12, the teachings of Nakamura differ from the present invention in that Nakamura does not teach any specific surface roughness for the copper foil on the wiring board of his invention. Gay, however, teaches a similar wiring board featuring a copper foil surface (Abstract) and teaches that the copper foils on such wiring boards preferably have a surface roughness of 0.9 microns or less ([0018]). It would have been obvious to one of ordinary skill in the art to make the foil on the wiring board of Nakamura have a surface roughness of 0.9 microns or less because Nakamura explicitly teaches such a value to be appropriate for the surface roughness of the copper foil on such a wiring board.
Conclusion
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/IAN A RUMMEL/ Primary Examiner, Art Unit 1785