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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2006/0081820) in view of Umeda et al. (US 2006/0057340) and Chacko (US Pat. 7,554,793).
Considering Claim 1: Li et al. teaches a conductive adhesive composition (¶0010) comprising an epoxy resin/heterocyclic compound containing oxygen (¶0058); a reductive curing agent that is an alpha amino acid (¶0073); and an onium borate curing accelerator (¶0075). The original specification teaches onium salts as being photo initiators that proceed a polymerization reaction by initiating the epoxy group (¶0057).
Li et al. does not teach adding an oxetane compound to the composition. However, Chacko teaches adding 1 to 30 weight percent of an conductive adhesive composition of 3-ethyl-3-hydroxymethyloxetane to an epoxy based conductive adhesive (2:51-3:21; 8:11-35). Li et al. and Chacko are analogous art as they are concerned with the same field of endeavor, namely conductive adhesives. It would have been obvious to a person of ordinary skill in the art to have added the oxetane compound of Chacko to the adhesive of Li et al., and the motivation to do so would have been, as Chacko suggests, to increase the cure speed (8:66-9:4) at low temperatures (9:34-45).
Li et al. teaches the amount of the amino acid as being 0.1 to 20 weight percent of the composition and teaches amount of matrix resin and the amino acid as being result effective variables (¶0064; 0074), and thus the ratio of the compounds would also be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of epoxy resin and amino acid through routine experimentation, and the motivation to do so would have been, to stabilize the metal particles (¶0076) and provide a structural matrix for the adhesive (¶0057).
Li et al. does not teach the species of photoinitator claimed. However, Umeda et al. teaches a conductive adhesive comprising an epoxy resin and diphenyliodonium hexafluorophosphate as a cationic photoinitiator (¶0038). Li et al. and Umeda et al. are analogous art as they are concerned with the same field of endeavor, namely conductive epoxy adhesives. It would have been obvious to a person of ordinary skill in the art to have substituted the initiator of Li et al. for the diphenyliodonium hexafluorophosphate of Umeda et al., and the motivation to do so would have been, as Umeda et al. suggests, it is functionally equivalent to the onium and imidazole compounds disclosed in Li et al. (¶0033-38).
Considering Claim 2: Li et al. teaches the epoxy resin as being a bisphenol F type epoxy resin in the example (¶0083).
Considering Claim 3: Li et al. teaches using glycine and lysine in the examples as reducing agents (¶0083). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). It would have been obvious to a person of ordinary skill in the art to have used a mixture of the two amino acids in the adhesive and the motivation to do so would have been, as Li et al. suggests, they are functional equivalents for the same purpose.
Considering Claim 4: Li et al. teaches adding the onium salt in an amount of 0 to 2 weight percent of the composition, and the epoxy resin in an amount of 2 to 60 weight percent of the adhesive (¶0064).
Considering Claim 5: Li et al. teaches adding an amine or carboxylic anhydride curing agent to the composition (¶0066).
Li et al. teaches the amount of matrix resin, crosslinking hardener, and the amino acid as being result effective variables (¶0064; 0066; 0074), and thus the ratio of the compounds would also be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of epoxy resin and amino acid through routine experimentation, and the motivation to do so would have been, to stabilize the metal particles (¶0076) and provide a structural matrix for the adhesive (¶0057).
Considering Claim 8: Li et al. teaches adding propanoic acid, benzoic acid, formic acid, acrylic acid, adipic acid, terephthalic acid, or maleic acid to the composition (¶0070-71).
Considering Claims 9 and 10: Li et al. teaches adding silver, nickel, copper, aluminum, or gold to the composition (¶0065) in an amount of preferably 5 to 85 weight percent (¶0065).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2006/0081820) in view of Umeda et al. (US 2006/0057340) and Chacko (US Pat. 7,554,793) as applied to claim 5 above, and further in view of Pham et al. (Epoxy Resins, Encyclopedia of Polymer Science and Technology, 2004).
Considering Claims 6 and 7: Li et al. teaches the adhesive of claim 5 as shown above. Li et al. teaches the hardener as being an amine or anhydride hardener.
Li et al. is silent towards the species of the hardeners used. However, Pham et al. teaches diethylene triamine (pg. 726) and hexahydrophthalic anhydride (pg. 736) as being conventional epoxy hardeners. Li et al. and Pham et al. are analogous art as they are concerned with the same field of endeavor, namely epoxy resins. It would have been obvious to a person of ordinary skill in the art to have used the epoxy hardeners of Pham et al. in the adhesive of Li et al., and the motivation to do so would have been, as Pham et al. suggests, they are conventional hardeners for epoxy resins.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2006/0081820) in view of Umeda et al. (US 2006/0057340) and Chacko (US Pat. 7,554,793) as applied to claim 5 above, and further in view of Heywood et al. (US 2013/0302336).
Considering Claim 11: Li et al. teaches the composition of claim 1 as shown above.
Li et al. does not teach a non conductive particle in the adhesive. However, Heywood et al. teaches adding a non-conductive inorganic filler/particles to the composition (¶0136-137). Li et al. and Heywood et al. are analogous art as they are concerned with the same field of endeavor, namely epoxy resins. It would have been obvious to a person of ordinary skill in the art to have added the filler of Heywood et al. to the adhesive of Li et al., and the motivation to do so would have been, as Heywood et al. suggests, to improve the strength of the adhesive (¶0136-137).
Response to Arguments
Applicant’s arguments with respect to claims 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767