DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed on December 17, 2025 has been entered in the above-identified application. Claims 1 and 2 are amended. Claims 4, 5, 9, 11, 13, and 18-27 are canceled. Claims 1-3, 6-8, 10, 12, 14-17, and 28-37 are pending and under consideration.
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.
3. Claims 1-3, 6-8, 10, 12, 14-17, and 28-37 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabe (US 2006/0177666 A1).
Kawabe disclose a curable resin composition (equivalent to the curable film composition of the claimed invention as recited in claims 1 and 2) which shows excellent chemical resistance, dielectric characteristics, heat resistance, flame retardancy and mechanical properties and low water absorption and is suitable for dielectric materials, insulating materials, heat-resistant materials, structural materials and the like. This curable resin composition comprises component (A) polyphenylene ether resin (equivalent to the poly(arylene ether) as recited in claims 6, 15, and 31). A thermoplastic resin as component (C) and a filler as component (D) may be incorporated in addition to component (A). In this case, it is preferable that component (C) accounts for 2-40 wt % of the sum of components (A), (B) and (C) and component (D) accounts for 2-90 wt % of the sum of components (A), (B), (C) and (D) (meeting the limitations of claims 3, 10, and 30). Thermoplastic resins suitable for use as component (C) include rubbers such as polybutadiene (equivalent to component (B) of the claimed invention as recited in claims 1, 2, and 10). Fillers suitable for use as component (D) include carbon black, silica, alumina, talc, mica, glass beads and hollow glass spheres (equivalent to component (A) of the claimed invention as recited in claims 1 and 2 and meeting the limitations of claim 12). It is allowable to add crosslinking components to the curable resin compositions. Compounds useful as component (E) include polyfunctional maleimides (equivalent to the maleimide resin of the claimed invention as recited in claim 10 and meeting the limitation of claim 14). When component (E) is incorporated in a curable resin composition of this invention, it is allowable to select as component (E) only one kind or a combination of two kinds or more of compounds from the aforementioned group of compounds. It is also allowable to use prepolymers of the aforementioned selected compounds as component (E) of this invention; the prepolymers are preliminarily formed by application of heat or light in the presence or absence of known catalysts, initiators (meeting the limitations of claims 7, 16, and 32) and curing agents. The curable resin composition cures by a crosslinking reaction caused by such means as heating and a radical initiator (also meeting the limitations of claims 7, 16, and 32) that may be incorporated in the composition to lower the reaction temperature or accelerate the crosslinking reaction of unsaturated groups. Additives may be incorporated in the composition and such additives include antioxidants, thermal stabilizers, antistatic agents, plasticizers, pigments, dyes and colorants. To improve the flame retardancy still more, flame retardants (meeting the limitations of claims 8, 17, and 33). The curable resin compositions of the disclosed invention are cured to give cured products which have excellent chemical resistance, dielectric characteristics and heat resistance after curing, and can be used as dielectric materials, insulating materials and heat-resistant materials in the electronic, space and aircraft industries (meeting the limitations of claims 29, 35, 37). Kawabe does not tach that the hollow glass spheres are subjected to an acid or alkaline wash before incorporation into the curable film.
Kawabe fails to teach that the hollow glass microspheres have D50 of equal to or less than 12 microns or a D50 of equal to or less than 19.5 microns. However, workable physical properties such as particle sizes are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties. With regards to the limitation that the cured film obtained from the curable film composition has a dielectric constant at 10 GHz of equal to or less than 2.5, the maleimide resin has a solubility in toluene of at least 15 g/100 ml 5 g/100 ml at ambient temperature, the cured film obtained from the curable film composition has a Tg of 150 °C or less, and that the cured film obtained from the curable film composition has an average coefficient of thermal expansion of equal to or higher than 60 ppm/°C in a temperature range of 25°C to 260°C, the Examiner takes the position that such property limitations are inherent in the cured film and the maleimide resin of Kawabe given that the cured film and the maleimide resin as taught by Kawabe and that of the claimed invention are identical.
Response to Arguments
4. Applicant's arguments filed on December 17, 2025 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1-3, 6-8, 10, 12, 14-17, and 28-37 under 35 U.S.C. 103 as obvious over US 2006/0177666 to Kawabe and state that Kawabe does not teach that the Tg is as low as "150°C or less." Applicants allege that Kawabe teaches a curable resin composition that must contain a polyphenylene ether resin as component (A) and a solvent-soluble polyfunctional vinyl aromatic copolymer as component (B) and hence the cured film obtained from Kawabe's curable resin composition is expected to have a high Tg so as to achieve the desired good heat resistance. Applicants further argue that all the Examples of the solvent-soluble polyfunctional vinyl aromatic copolymer described in Kawabe had a high Tg of more than 250°C (Kawabe, Table 1) and that the thus-obtained cured films had a Tg of at least 192°C.
However, the Examiner disagrees. First, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. There is nothing in Kawabe that limits their Tg to above 150°C. Second, once a product appearing to be substantially identical is found and a rejection has been made, the burden shifts to the Applicant to show an unobvious difference. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In this case, persuasive evidence would need to be provided to support the position that the cured film obtained from Kawabe's curable resin composition has a high Tg so as to achieve their desired heat resistance. Given that a sound basis has been provided in the rejection of record for believing that the claimed products and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e. naturally flow from the prior art).
Hence, the rejection is maintained.
Conclusion
5. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHEEBA AHMED/Primary Examiner, Art Unit 1787