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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 5-11, in the reply filed on 11/6/2024 is acknowledged. It is noted that claims 1-4 have been rejoined and examined as set forth below.
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/6/2024.
Claim Rejections - 35 USC § 102
Claim(s) 1-3, 5-8, and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mori et al. (JP 6497477 B1) .
Note: US 2021/0251111 is used as an English language equivalent. Citations refer US ‘111.
Regarding claim 1:
Mori discloses an electromagnetic-wave shielding sheet for electronic components [0001]. The sheet is formed from a resin composition comprising a binder resin and a conductive filler [0048-0049; 0096; 0170]. The filler provides the shielding properties [0113].
While there is no disclosure that the resin composition is “An insert molding resin composition” as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. an insert molding resin composition, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a resin composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 2-3:
Mori teaches the binder resin comprises thermosetting resins and/or thermoplastic resins [0103-0111].
Regarding claim 5:
Mori discloses a sealed electronic component comprising the electromagnetic-wave shielding layer [0035; 0039; 0045; Figs. 1 and 3]. The electromagnetic-wave shielding layer has a conductive filler occupation area ratio (A) in a region nearer the surface of the electronic component is greater than the conductive filler occupation area ratio (B) in a region nearer a surface of the resin molded body [0085-0095; Figs. 4 and 8].
Regarding claim 6:
Mori discloses the electromagnetic-wave shielding layer is in direct contact with electronic components (note that substrate 20 also comprises electrical components such as a printed circuit board) [0041-0047; Figs. 2-3].
Regarding claims 7-8 and 10-11:
See the rejections of claims 1-3. Thermosetting resins include epoxy resin, phenolic resin, polyimide, etc. [0104; 0107]. Thermoplastic resins include polyester resin, polyamide resin, etc. [0111].
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takamoto et al. (JP 2018-019067).
Note: citations refer to the machine translation of JP ‘067 provided with this Office Action.
Regarding claims 1 and 3:
Takamoto discloses a semiconductor (electronic) device comprising a first sealant, and a second sealant, wherein the second sealant is formed from a second thermosetting resin composition comprising a conductive filler [abstract; 0001; 0008]. The second sealant has electromagnetic wave shielding properties because of the conductive filler [0016]. The second thermosetting resin composition is a molding composition, including for insert molding [0011; 0089].
Claim Rejections - 35 USC § 103
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP 6497477 B1).
Note: US 2021/0251111 is used as an English language equivalent of JP ‘477.
Regarding claim 4:
Mori teaches one embodiment wherein the resin has a weight average molecular weight of 20,000-150,000, which affects the scratch resistance and conforming property of the resin [0106; 0108].
One of ordinary skill in the art recognized the weight average molecular weight (Mw) is greater than the number average molecular weight (Mn). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the molecular weight of the resin, including over values presently claimed, to provide the scratch resistance and conforming properties desired for a given end use.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP 6497477 B1) in view of Takamoto et al. (JP 2018-019067).
Note: US 2021/0251111 is used as an English language equivalent of JP ‘477.
Note: citations refer to the machine translation of JP ‘067 provided with this Office Action.
Regarding claim 9:
Mori discloses an electromagnetic-wave shielding sheet for electronic components as previously explained. The conductive filler can have various shapes, including flakes, fibers, and needles [0113].
Mori is silent with regard to an aspect ratio of the filler.
Fillers having aspect ratios as claimed were known in the art to have utility. For example, Takamoto discloses a semiconductor (electronic) device comprising a first sealant, and a second sealant, wherein the second sealant is formed from a second thermosetting resin composition comprising a conductive filler [abstract; 0001; 0008]. The second sealant has electromagnetic wave shielding properties because of the conductive filler [0016]. The filler has various shapes, including flat (flakes) and needles [0046]. The fibrous filler has an aspect ratio of 5 to 60 to provide a conductive path, which improves the electromagnetic shielding [0048]. Fillers with different aspect ratios can be used to further improve the shielding [0049].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the aspect ratio of Mori’s filler, including over values presently claimed, to provide conductive paths and improve the shielding properties as known in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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 on 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.
/JOHN D FREEMAN/Primary Examiner, Art Unit 1787