DETAILED ACTION
Applicant’s reply, filed 12 June 2025 in response to the non-final Office action mailed 12 March 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-20 are pending, wherein: claim 1 has been amended and claims 2-20 are as originally filed. Further, Applicant’s filed abstract amendments have been fully considered and found acceptable.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 May 2025 was filed after the mailing date of the non-final Office action on 12 March 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-2, 4-15, 17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations).
Regarding claims 1-2, 5-9, 12, 17 and 19-20, Nakamura teaches thermosetting resin compositions comprising an epoxy resin (instant epoxy compound), a phenol curing agent (instant phenolic compound), a curing/hardening accelerator (instant claim 12), and a heat conductive inorganic filler (instant inorganic substance) containing secondary aggregated particles (abstract; pg2-3).
Nakamura further teaches the optional inclusion of 24 parts by mass or less per 100 parts resin of flexibility-imparting agents (pg4; pg5) and/or 0.1 to 20 parts by mass per 100 parts resin of coupling agents (pg7). Nakamura teaches the flexibility-imparting agents include acrylic resins, bisphenol resins, aliphatic dicarboxylic acid modified resins, silicone rubbers, etc. (pg4) and teaches the coupling agents include γ-glycidoxypropyltrimethoxysilane, N-β (aminoethyl) γ-aminopropyltriethoxysilane, N-phenyl-γ-aminopropyltrimethoxysilane, and γ-mercaptoproypltrimethoxysilane (pg7) (instant compounds readable on compound X)(instant claims 5-7, 17 and 19).
Nakamura further teaches the heat conductive inorganic filler containing secondary aggregated particles is boron nitride, having an average particle diameter of the aggregate of 20 µm or more and 180 µm or less (pg6), and is present from 30% by volume or more based on the composition (pg7)(instant claims 8-9 and 20).
Regarding claim 4, Nakamura teaches the thermosetting resin composition set forth in claims 1 and 2 above and further teaches the phenol curing agent selected from well-known phenol curing agents including dicyclopentadiene cresol, etc. (pg3)(instant molecular weight of 400 or less).
Regarding claims 13-15, Nakamura teaches the thermosetting resin composition set forth in claim 1 above and further teaches the composition is cured into a film or sheet (pg9-10) and may be incorporated into a power module as a sheet (pg9)(instant layer; instant device).
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 3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations) as set forth above and further in view of Sumita et al. (US PGPub 2018/0186925).
Nakamura teaches the resin compositions as set forth in claims 1-2 above and as noted teaches phenol-based curing agents, which can be any known phenol curing agent (pg3). Nakamura does not specifically teach a ‘hydroxyl group content’ of 12.0 mmol/g or more (claim 3) or a molecular weight of 400 or less (claim 16). However, Sumita teaches phenol based curing agents of formula (6), wherein n is from 0-10 and R1 and R2 include hydrogen, C1-10 alkyls, an allyl or a vinyl ([0033]-[0035]). Sumita teaches n is preferably from 0-4 for reasons of melt fluidity and teaches R1 and R2 may be hydrogens which renders obvious phenol curing agents readable over compounds having a molecular weight of 400 or less as claimed. Further the teaching by Sumita of n = 0-4 corresponds to a minimum of 4 hydroxyl groups to a maximum of 12 hydroxyl groups (see structure (6)) and as such renders obvious the same phenol curing agents readable over compounds having a hydroxyl group content of 12.0 mmol/g or more. Sumita and Nakamura are analogous art and are combinable because they are concerned with the same field of endeavor, namely resin compositions suitable for use in semiconductors comprising phenol-based curing agents. At the time of filing a person having ordinary skill in the art would have found it obvious to select the phenol-based curing agents of Sumita as the phenol-based curing agents of Nakamura and would have been motivated to do so as Nakamura prefers phenol-based curing agents but does not limit such, and further as Sumita teaches the phenol-based curing agents of formula (6) are capable of reducing resin viscosity at the time of resin-melting and provides high heat resistance ([0037]).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations) as set forth above and further in view of Nakamura (US PGPub 2011/0139496; hereafter Nakamura-2).
Nakamura teaches the resin compositions as set forth in claim 1 above but does not specifically teach a surface modifier for the inorganic substance (claim 10) beinbg a condensed ring skeleton or triazine skeleton (claim 11).
However, Nakamura-2 teaches epoxy resin compositions (abstract; [0011]) which comprise inorganic fillers, including boron nitride ([0035]), which are treated with a surface treating agent in order to enhance moisture resistance ([0038]). Nakamura-2 teaches imidazole silanes, triazine silanes, organosilazane compounds, silane based coupling agents aminosilane based coupling agents, etc. ([0038]). Nakamura-2 and Nakamura are analogous art and are combinable because they are concerned with the same field of endeavor, namely epoxy resin compositions comprising inorganic fillers. At the time of filing a person having ordinary skill in the art would have found it obvious to surface modify as taught by Nakamura-2 the inorganic fillers of Nakamura and would have been motivated to do so as Nakamura-2 teaches doing so will enhance moisture resistance.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations) as set forth above and further in view of Osada et al. (US 6,630,745).
Nakamura teaches the resin compositions as set forth in claims 1-2 above but does not specifically teach a linear or branched organopolysiloxane having two or more alkenyl groups bonded to a silicon atom as claimed. However, Osada teaches epoxy resin compositions comprising (A) an epoxy, (B) a phenolic resin curing agent, (C) molybdenum compound, and (D) a silicon compound selected from the group of organopolysiloxane (D-i), cured organopolysiloxane (D-ii) and organopolysiloxane copolymer (D-iii) (col 1 ln 59 to col 2 ln 21). Osada teaches the (D-i) organopolysiloxane is a compound of formula (1) R1aSiO(4-a)/2 where a is from 0.8 to 3, and R1 is selected from alkenyl groups such as vinyl, allyl, propenyl, butenyl, and hexenyl groups (col 4 ln 1-9, ln 42-55; col 5 ln 1-20). Osada teaches that it is known to include such silicone polymers to plastic materials as they are effective for improving flame retardance during combustion (col 4 ln 33-40). Osada and Nakamura are analogous art and are combinable because they are concerned with the same field of endeavor namely epoxy resin compositions suitable for use in semiconductors. At the time of filing a person having ordinary skill in the art would have found it obvious to select the organopolysiloxanes of Osada as the siloxane compounds of Nakamura and would have been motivated to do so as Nakamura invites the inclusion of such compounds and further as Osada teaches the organopolysiloxanes are effective for improving flame retardance of epoxy resin compositions.
Response to Arguments/Amendments
The objection to the abstract of the specification is withdrawn as a result of Applicant’s filed abstract replacement.
The 35 U.S.C. 102(a)(1) rejection of claims 1-5, 7-10, 12-17 and 19-20 as anticipated by Nakamura (US PGPub 2017/0290149) and the 35 U.S.C. 103 rejections of claims 3-4 and 16 as unpatentable over Nakamura in view of Sumita (US PGPub 2018/0186925), of claims 6 and 18 as unpatentable over Nakamura in view of Osada (US 6,630,745), and of claim 11 as unpatentable over Nakamura in view of Nakamura (US PGPub 2011/0139496) are withdrawn as a result of Applicant’s filed claim amendments. Note the new grounds of rejection as set forth above as necessitated by said claim amendments incorporating new subject matter limitations.
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 JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767