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 Status
Claims 1 and 4 are amended, claim 3 is canceled. Claims 1, 4, and 7 pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/18/2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on April 29, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number(s) 19/132,942 and 17/768,453 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The double patenting rejection has been withdrawn.
Response to Arguments
Applicant’s arguments, see p. 6-8, filed 04/29/2026, with respect to the rejections of claims 1, 3, 4, and 7 under 35 U.S.C. 112(a) and 112(b) have been fully considered and are persuasive. The rejections under 35 U.S.C. 112(a) and 112(b) have been withdrawn.
Applicant’s arguments, see p. 7-12, filed 04/29/2026, with respect to the rejection(s) of claim(s) 1 and 7 under 35 U.S.C. 103 over Fujita (US 2011/0282010 A) 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 Therefore, the rejection has been withdrawn.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 Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation).
Applicant's arguments filed 04/29/2026 regarding Nobuhiko have been fully considered but they are not persuasive.
Applicants argue, “Nobuhiko only provides a general range for liquid refractive index. However, Nobuhiko provides no disclosure of the specific multi-component interaction claimed herein.”
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicants argue, “Therefore, Nobuhiko fails to teach or suggest "a highly refractive epoxy resin comprising a compound represented by Chemical Formula 1 or 2 below, in an amount of 50 to 80 parts by weight; a highly adhesive epoxy resin comprising a compound represented by Chemical Formula 3, in an amount of 5 to 30 parts by weight; an epoxy resin containing one or more compounds selected from the group consisting of A-1 to A-3 below, in an amount of 10 to 50 parts by weight; and a latent thermal curing agent, in an amount of 1.0 to 1.5 parts by weight, based on 100 parts by weight of the total epoxy resin components," as recited in claim 1.”
Nobuhiko teaches a resin composition comprising 20 to 80 parts by mass of an aromatic component (A), 20 to 80 parts by mass of a cyclic compound (B), and 0.1 to 5 parts by mass of a curing agent (C) [p. 0021]
Nobuhiko teaches component (B) more preferably comprises a compound with an (i) aromatic ring skeleton having epoxy groups or an (ii) alicyclic epoxy resin having epoxy groups, wherein the compounds may be used alone or in combination of two or more (i+ii) [p. 0052, 0053].
Component A of Nobuhiko corresponds to claimed chemical formula 1, the highly refractive epoxy resin;
Component B of Nobuhiko corresponds to (i) the aromatic highly adhesive epoxy resin, as well as (ii) the alicyclic epoxy resin.
Nobuhiko teaches that (i) aromatic ring compounds as component (B) are preferred because they reduce moisture permeability, while (ii) alicyclic epoxy resins as component (B) are preferred because they have low viscosity, which makes them easy to process, and they have an excellent curing rate [p. 0037 0053].
As Nobuhiko teaches both (i) and (ii) impart independent and distinct benefits to the composition, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the composition of Nobuhiko wherein component (B) comprises both (i) and (ii).
Furthermore, Nobuhiko the composition may comprise 20 to 80 parts by weight of component (B) [p. 0098]. Applicants claim that the adhesive epoxy resin comprises 5 to 30 parts by weight of the composition, and the alicyclic epoxy resin comprises 10 to 50 parts by weight of the composition, together they comprise 15 to 80 parts by weight of the composition – which lies inside the range Nobuhiko teaches for component (B). As Nobuhiko teaches (i) and (ii) provide independent and distinct beneficial qualities to the composition, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to optimize the respective amounts of (i) and (ii) within the prior art conditions to achieve the desired characteristics (ex. low viscosity, reduced moisture permeability, see Nobuhiko [p. 0037]).
Applicants argue, “According to the experimental data in the present application, the specific combination of Chemical Formulas 1-3 with the A-2 (or A-1 to A-3) system yields a synergistic effect. This precise formulation enables the simultaneous achievement of three critical parameters: (i) high liquid refractive index (> 1.58); (ii) high film refractive index (> 1.61), and (iii) an exceptionally low viscosity (600-660 mPa-s).”
The examiner respectfully disagrees with the applicants assertion that specific combinations of chemical formulas 1-3 with A-2 (or A-1 to A-3) provide synergistic (unexpected) results. Applicants provide no showing wherein the diluted epoxy resin is A-3. Furthermore, applicants do not provide inventive examples wherein the highly reactive epoxy resin is a compound is the fluorene type epoxy resin of chemical formula 2, only comparative examples. In light of this, the showings of applicants do not demonstrate properties (i)-(iii) when the composition comprises the claimed species, and therefore is not commensurate in scope with the claimed invention. Instead, there is evidence only compositions comprising compounds of chemical formula 1, A-2, and chemical formula 3 provide the claimed refractive indices.
Furthermore, the viscosity of the resin composition is not claimed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation).
Nobuhiko et al teaches a resin composition for surface encapsulation of a display device comprising an aromatic compound (A) and a cyclic compound (B) [p. 0001, 0010].
Nobuhiko exemplifies compositions wherein (A) comprises o-phenylphenol glycidyl ether (OPP-G; corresponding to applicants D-1 and chemical formula 1) and (B) comprises bisphenol A diglycidyl ether (jER-828; corresponding to applicants B-1 and chemical formula 3) [table 1, example 1]; and compositions wherein (A) comprises OPP-G and (B) comprises3,4-epoxycyclohexenylmethyl-3',4'-epoxycyclohexenecarboxylate (SEJ-01R; corresponding to applicants A-1) [table 1, example 4].
Nobuhiko fails to exemplify a (B) component wherein both an aromatic and alicyclic epoxy component are present. However, Nobuhiko teaches component (B) more preferably comprises a compound with an aromatic ring skeleton having epoxy groups or an alicyclic epoxy resin having epoxy groups, wherein the compounds may be used alone or in combination of two or more [p. 0052, 0053]. Nobuhiko teaches alicyclic epoxy resins as component (B) are preferred because they have low viscosity, which makes them easy to process, and they have an excellent curing rate, while aromatic ring compounds as component (B) are preferred because they reduce moisture permeability [p. 0037 0053]. In example of Nobuhiko, (A) and (B) are both present at 50 parts by weight [table 1]. The general teachings of Nobuhiko is that ratio of the aromatic compound (A): the cyclic compound (B) is 3:7 to 7:3 [p. 0098].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Nobuhiko wherein component (B) comprises both an alicyclic and aromatic compounds (ex. 50 pbw OPP-G, 25 pbw jER-828 and 25 pbw SEJ-01R) as Nobuhiko teaches alicyclic and aromatic species impart distinct beneficial properties to the resin. Furthermore, Nobuhiko teaches the use of thermal curing initiators, benzylmethyl-p-hydroxyphenylsulfoniumhexafluorophosphate-, which is known in the art to be a latent thermal initiator, at an amount of 0.01 to 5 pbw per 100 parts by mass of the total amount of component (A) and component (B) [p. 0065]. Nobuhiko teaches the resin has a refractive index of 1.45 to 1.70 [p. 0195]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation), and further in view of Hikida (US 2019/0300674 A1).
Nobuhiko teaches a variety of alicyclic epoxy compounds suitable for use in component (B) including:
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Although Nobuhiko teaches the use of alicyclic multicyclo species in component (B), Nobuhiko is silent with respect to compounds of formula (A-2).
Hikida teaches a functional film composition for use as a barrier for electronic elements [0003-0009]. Hikida teaches the barrier film includes a base material component, and teaches thermosetting epoxy resins as a suitable base material [0013, 0075]. Hikida teaches the epoxy resin comprises alicyclic epoxy compounds, wherein the following specific species are preferred as they provide a cured product having high hardness [p. 0087, 0103, 0104]
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In light of this, it would have been obvious to prepare the composition of Nobuhiko wherein component (B) comprises an alicyclic epoxy compound as taught by Hikida (such as those of formula A-2) as Hikida teaches they provide a cured product with high hardness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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