DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/24/25 has been entered.
Response to Amendment
The rejection of Claims 1-4 and 6-10 under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 10-2020-0079394) in view of Nishina et al. (US 2003/0051770 A1) as set forth in the Final Rejection filed 09/23/25 is overcome by the Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 1, which the other claims are dependent upon, recites the broad recitation “an activator selected from a group consisting of a dicarboxylic acid and a dicarboxylic anhydride,” and the claim also recites “wherein the activator is selected from a group consisting of compounds of Formulae 8 and 9” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-3 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bae et al. (KR 10-2013-0042241).
Examiner’s Note: The Office has relied on the Machine English translation as the English equivalent of foreign patent publication KR 10-2013-0042241 (herein referred to as “Bae et al.”). Unless otherwise indicated, all page, paragraph, and figure numbers refer to those found in the Machine English translation.
Bae et al. discloses a flux composition using a ball grid array (BGA) package that uses solder balls for semiconductor devices ([0001]-[0006]; Fig. 1); the composition comprises epoxy resin, activator, and solvent (page 4). The epoxy resin includes bisphenol A type as shown below:
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(page 4) (which is a substituted phenol group), the activator includes maleic anhydride (page 5) (corresponds to Applicant’s Formula 8), and the solvent includes xylene ([0031]). The activator is included in an amount 10-30 parts by weight based on 100 parts by weight of the resin ([0039]); the solvent is included in an amount 20-50 parts by weight based on 100 parts by weight of the resin ([0043]).
It is further the position of the Office that the resulting composition would inherently read on the physical and chemical limitations as recited in the claims. Evidence is provided by the fact that the resin, activator, and solvent of the flux composition as disclosed by Bae et al. is identical to the Applicant’s preferred flux composition materials within the preferred wt% ranges as preferred by the Applicant (see, for example, present Claims 1, 6, and 7).
Response to Arguments
9. Applicant’s arguments on pages 12-18 with respect to the deficiencies of the previously cited prior art have been considered but are moot in view of the new grounds of rejection as set forth above.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
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/JAY YANG/Primary Examiner, Art Unit 1786