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 .
Examiner Note: This is action is based upon the response after final action dated 2/5/2026. The Applicant's arguments relating to the previous grounds of rejection are persuasive. Accordingly, the previous grounds of rejection have been withdrawn and new grounds of rejection are presented below. The new grounds of rejection were not necessitated by an amendment to the claims or an information disclosure statement; therefore, the current Office action is non-final.
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, 3-6, 8-13, 17-18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (US20180105692, herein Imaizumi).
Regarding Claims 1, 20, Imaizumi teaches curable granular silicone composition [0007] for transfer molding [0120] comprising: (A) silicone fine particles having a hydrosilylation reactive group and/or radical reactive group [0015], within a range of I to 10 μm [0077], which reads on microparticles; component (B) a reinforcing filler [0012], in the range of the amount of component (B) is preferably 10 to 3000 parts by mass with regard to 100 parts by mass of component (A) [0013], overlaps the claimed range; and (C) a curing agent [0015]. Imaizumi further teaches (A1) a resinous organopolysiloxane [0010]; (PhSiO3/2)0.80(Me2ViSiO1/2)0.20 [0125], wherein the vinyl group indicates carbon-carbon double bond in the molecule; RSiO3/2 mol % is 80%, which lies within the claimed range and 270.5 g of 55 mass % toluene solution of resinous organopolysiloxane in a white solid form [0125] which lies within the claimed range.
Imaizumi teaches the dimension of component (B), such as titanium oxide, silica [0083], with the average particle size within a range of 0.05 to 10.0 μm [0084], which overlaps the claimed inorganic filler (b1) size range. Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized the size between 0.05 to 0.1 μm with a reasonable expectation of success, and would have been motivated to do as Imaizumi discloses that such amounts are suitable for the invention. Furthermore, the filler size selection toward to the lower dimension of the size between 0.05 to 0.1, with higher interfacial surface area can lead to the improvement of the filler dispersion, hence further enhance its performance via impairing mechanical strength to the cured product and improve protective properties and adhesion [0083].
Imaizumi further teaches a range of 0.1 to 5.0 μm [0084] overlaps the inorganic filler (b2) size range; it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the size range of the white pigment and select the same or smaller size of component (B) than the size of component (A), and further apply into the composition formation. Doing so would further lead to desired filler dispersion via the filler size selection of the lower dimension, which has higher interfacial surface area, can ease the filler dispersion process and further impair the filler functionality into the cured product .
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Imaizumi teaches all of the claimed ingredients, in the claimed amounts, molecular structures, and Imaizumi teaches the composition as being made by a substantially similar process as of curable granular silicone composition [0120] via transfer molding; molded product [0120]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., maximum torque value; the loss tangent (tans) expressed by the ratio of stored torque value/lost torque value would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 3, Imaizumi teaches hot meltable silicone fine particles [0134], indicate the hot melt properties.
Regarding Claim 4, Imaizumi teaches curable granular silicone composition [0014]; hot meltable silicone fine particles having a hydrosilylation reactive group [0015].
Regarding Claim 5, Imaizumi teaches (A1) a resinous organopolysiloxane, (A2) a crosslinked organopolysiloxane formed by crosslinking at least one type of organopolysiloxane, (A3) a block copolymer formed from a resinous organosiloxane block and a linear organosiloxane block or silicone fine particles formed from a mixture of two types or more thereof [0023].
Regarding Claim 6, Imaizumi teaches (A1) a resinous organopolysiloxane [0010]; (PhSiO3/2)0.80(Me2ViSiO1/2)0.20 [0125], wherein phenyl group indicates aryl group having 6 carbon atoms; repeating units (PhSiO3/2)0.80.
Regarding Claim 8, Imaizumi teaches pellet form [0014].
Regarding Claim 9, Imaizumi teaches the curable granular silicone composition was cast using a transfer molding machine to prepare a molded product [0120].
Regarding Claims 10, 11, 12, Imaizumi teaches optical semiconductor device comprising the cured silicone composition [0085].
Regarding Claim 13, Imaizumi teaches stirring was performed for 1 minute at room temperature (25° C.) to prepare a uniform and white curable granular silicone composition (1) [0134], which lies in the temperature range.
Regarding Claims 17-18, Imaizumi teaches the composition of claim 1 as shown above. Imaizumi further teaches the dimension of component (B), such as titanium oxide, silica [0083], which are inorganic fillers with the average particle size within a range of 0.1 to 5.0 μm [0084], which excluded the inorganic filler coarse particles having average particle diameter of 5.0 μm or more.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (US20180105692, herein Imaizumi), as applied in claim 1 above, in the view of Azechi (US20020132891, herein Azechi).
Regarding Claim 14, Imaizumi teaches the composition of claim 1 as shown above. Imaizumi does not explicitly teach the steps of molding a cured product, however, Azechi teaches transfer molding at temperature of about 60 to 200° C via injection molding [0069], where the mold halves were clamped [0096] and curing the silicone rubber adhesive composition [0072]. Imaizumi and Azechi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone composition formation toward molded product manufacturing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to add the teachings of transfer molding at temperature of about 60 to 200° C via injection molding [0069], where the mold halves were clamped [0096] and curing the silicone rubber adhesive composition [0072] into the cured product formation. Doing so would further optimize the process by specifying the temperature, molding method and curing step, owing to any desired molding technique may be selected depending on the viscosity of the mixture or composition.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (US20180105692, herein Imaizumi), as applied in claim 1 above, in the view of Morita (US20090203837, herein Morita), as further evidenced by Tomoya (US20170200629, herein Tomoya).
Regarding Claims 15, 16, Imaizumi teaches the composition of claim 1 as shown above. Imaizumi teaches method of molding the cured product [0110] comprising: the curable granular silicone composition [0007] as coating agent [0149] and underfill agent for power semiconductors such as SiC, GaN [0149], wherein, the SiC (Silicon Carbide) and GaN (Gallium Nitride) are known as the semiconductor wafer materials, as evidenced by Tomoya, who teaches semiconductor wafer or the substrate, such as a gallium nitride wafer, a silicon carbide wafer [0083] [Evidence Reference], and further apply the transfer molding [0149] as taught by Imaizumi.
Imaizumi does not teach the specific steps including overmolding, however, Morita teaches the curable silicone composition was coated on the underfilled semiconductor element and overmolding was carried out [0061], as shown in FIG. 1 [Page 1] below: an electronic component that has been sealed with cured product using the curable silicone composition [0048], wherein, the semiconductor element 1 is electrically connected, onto a substrate 2 that is provided with circuitry, by a ball grid 3 [0048] which collectively read on the plurality of semiconductor devices are mounted with curable silicone resin, and further lead to the gap between the semiconductor element 1 and the substrate 2 is filled [0048] further indicates that a gap between the semiconductor devices is filled with the cured product.
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Imaizumi and Morita are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of curable silicone composition formation toward molded product and application on the semiconductor devices. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teachings of the curable silicone composition was coated on the underfilled semiconductor element and overmolding was carried out [0061], an electronic component that has been sealed with cured product using the curable silicone composition [0048], wherein, the semiconductor element 1 is electrically connected, onto a substrate 2 that is provided with circuitry, by a ball grid 3 [0048], and further lead to the gap between the semiconductor element 1 and the substrate 2 is filled [0048], into the curable silicone resin molding process and apply to semiconductor device. Doing so would further optimize the process by specifying steps which lead to the application of the curable silicone resin provide a tight adhesion with substrate; electronic components of the present invention, because they are sealed or bonded by cured product from the curable silicone composition, are characterized by an excellent reliability [0013] as taught by Morita.
Response to Arguments
Applicant’s arguments, filed 2/5/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Imaizumi (US20180105692, herein Imaizumi) set forth above, wherein Imaizumi teaches the composition as set forth in the new rejection above, which can lead to the desired property of hot melt properties, and has excellent handling workability and curability [0017], which line up with hot-melt properties, from the viewpoint of providing favorable gap-filling properties during melting and flexibility of the cured product at room temperature to high temperature [Instant App. US20220049100; 0132].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767 /MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767